Petition for Writ of Certiorari

TAX ANALYSTS,
Petitioner,
v.
U.S. DEPARTMENT OF JUSTICE and WEST PUBLISHING CO.,
Respondents.

In The Supreme Court of the United States

October Term, 1996

Petition for Writ of Certiorari to the United States
Court of Appeals for the District of Columbia Circuit

PETITION FOR WRIT OF CERTIORARI

CONSTANCE M. SPHEERIS
Counsel of Record
THOMAS F. FIELD
LOUIS M. LYONS, II
TAX ANALYSTS
Attorneys for Petitioner
6830 North Fairfax Drive
Arlington, Virginia 22213
(703) 533-4400

Tax Analysts petitions for a Writ of Certiorari to review the judgment of the United States Court of Appeals for the District of Columbia Circuit in this case.

OPINIONS BELOW

The decision of the District of Columbia Circuit of January 21, 1997, is unreported, as is the April 10, 1997, order of that court regarding Tax Analysts' petition for rehearing and suggestion for rehearing en banc. The decisions of the court of appeals are reprinted, respectively, in Appendix A (“App. 1a”) and Appendix C (“App. 24a”). These decisions affirmed the ruling of the United States District Court for the District of Columbia, reported at 913 F. Supp. 599 (D.D.C. 1996) (Appendix B, “App. 3a”).

STATEMENT OF JURISDICTION

The judgment of the D.C. Circuit was entered on January 21, 1997 (App. 1a), and the clerk issued the mandate of the court on April 21, 1997. A timely petition for rehearing with a suggestion for rehearing en banc was denied on April 10, 1997 (App. 24a). The jurisdiction of this Court is invoked pursuant to 28 U.S.C. § 1254(1).

STATUTORY PROVISION INVOLVED

The Freedom of Information Act (“FOIA”), 5 U.S.C. § 552, provides in relevant part:¹

STATEMENT OF THE CASE

A. Significance Of The Underlying FOIA Action

This case presents an extraordinary opportunity for the release onto the Internet of the public domain texts of the opinions of federal judges, congressional statutes, and administrative material otherwise unavailable to the public. Tax Analysts, a nonprofit charitable and educational corporation, brought this suit under the FOIA to make the nonproprietary contents of the Department of Justice's JURIS database freely available to the public, without charge, on the Internet. It is the only such public, archival collection known to exist. This FOIA request is the only measure delaying the transfer to the West Publishing Co. (“West”) of JURIS, and the eventual destruction of JURIS.

JURIS is a comprehensive, computerized legal research system designed and developed by the Department of Justice (“Justice” or “the Department”) in the late 1970s.² Some of its contents came from the Department of the Air Force's FLITE database, while other contents came from Justice itself. JURIS contains federal and state case law dating back decades, including historically significant opinions from the last century. Also, JURIS likely contains legal briefs, administrative rulings, and similar documents prepared by federal and state agencies. The software that runs JURIS and determines all of the operating characteristics of the JURIS system — both its search capabilities and its formatting architecture — was written by government employees at public expense. All of the data in the database, both public domain and proprietary, was processed for use in JURIS at government expense.

At some point in the 1980s, and at least by 1988 — the year of the contract in question — the Department contracted with West to provide computer services to the Department for JURIS. Justice loaned copies of its JURIS software to West for West's use in implementing the contract; viz., processing data West was to prepare for input into the JURIS system.

The 1988 contract is said to reflect two Requests for Proposal (“RFPs”), issued by the Department in the early 1980s. Although these RFPs were not entered into the record, they were cited by the district court in its opinion. One RFP apparently sought West proprietary material such as that contained in its federal digests and was considered a “sole source” contract The second RFP sought updating services for the JURIS database collection of federal case law, statutes, and administrative documents. Any contractor with the best bid to supply the public domain material could have won this second RFP. West won both bids. Presumably this is why the 1988 contract contains work orders separated by “Proprietary” and “Nonproprietary” section headings.³

Based on this 1988 contract, West claims “proprietary rights” to the entire JURIS database — the proprietary as well as nonproprietary portions.

This FOIA action does not seek access to headnotes, synopses, page numbers, key numbers, or similar types of information prepared by private parties that might be contained in the “proprietary” portion of JURIS. Rather, this suit seeks access to the federal and state case law and the federal statutes in the nonproprietary portion of the JURIS database — the actual words written by federal and state judges at public expense in their written opinions — unenhanced by page numbers, synopses, or other types of arguably proprietary material.⁴

B. Proceedings Below And Procedural Issues

In the district court below, the Department and West each filed a Fed. R. Civ. P. 12(b)(1) motion to dismiss. They asserted that a license provision in the 1988 contract conferred on West proprietary rights to about 80% of the entire database. This interpretation arguably broadens the scope of the license to include portions extant in the database before West was awarded its contract and all of the public domain case law that West processed for the Department according to, and using, the Department's JURIS software programs. Tax Analysts made four separate requests for discovery so that it could investigate the premise of the 12(b)(1) motions to dismiss: that West had transferred to Justice some unnamed and unproven proprietary element in electronic form when it processed case law for the Department with the JURIS software as required by the contract.

The court denied all four of Tax Analysts requests for discovery. Relying in part on facts in the defendants' untested affidavits, the court granted the 12(b)(1) motions and ruled that West had proprietary rights in the “electronic formatting” of JURIS and dismissed Tax Analysts' complaint. Neither West nor the Department were obliged to offer proof to support West's proprietary claim over the electronic formatting in JURIS.

On appeal, based on the intertwining of jurisdiction and merits in the FOIA, Tax Analysts asserted error in the court's denial of discovery in the face of the Rule 12(b)(1) challenges to its lawsuit. Because no record exists on which to base a substantive challenge, Tax Analysts seeks a remand on appeal to take expert testimony, conduct depositions, and present evidence.

The lower court's dismissal of Tax Analysts' FOIA action without any opportunity to discover facts relevant to the Rule 12(b)(1) motions left that court and the court of appeals without the benefit of expert testimony regarding the mechanics of electronic databases. As a result, the courts below reached legal conclusions based on several incorrect “library” metaphors using print or similar systems. Both courts engaged in fact-finding outside the record and based their decisions in part on legal issues never briefed by the parties, such as the legal effect, if any, of electronic scanning of print material.

Remarkably, the court of appeals never addressed — in oral argument or in its decision — the federal procedural issue raised by the intertwining of jurisdiction and merits in Tax Analysts' FOIA action. Instead, the court affirmed the district court based on the standard for denial of discovery in the face of a Rule 12(b)(1) motion without intertwining. El-Fadl v. Central Bank of Jordan, 75 F.3d 668 (D.C. Cir. 1996). Without intertwining in the FOIA, both the district and the appellate courts would be correct: In such a case, the district court has wide discretion to decide its own jurisdiction. Herbert v. National Academy of Sciences, 974 F.2d 192, 197, 198 (D.C. Cir. 1992); Williamson v. Tucker, 645 F.2d 404, 412, 413 (5th Cir. 1981), citing Mortensen v. First Federal Savings and Loan Ass'n, 549 F.2d 884, 891 (3rd Cir. 1977).

However, based on the intertwining of jurisdiction and merits in the FOIA, federal law requires remand and an opportunity for discovery in the district court before any discussion occurs regarding the subject matter of the 12(b)(1) motions. In such a case, the parties, not the court, should undertake the task of establishing facts. Id.

In addition to the dictates of the intertwining doctrine, the underlying federal statute, the FOIA, requires it: the FOIA carries a presumption for release of the requested agency record absent a showing that the material falls within one of the nine statutory exemptions in subsection 5 U.S.C. § 552(b).⁵ West's opposition to release prevailed as a preemptive jurisdictional challenge; whereas under the statute, West should have been required to assert its position during the court's review of the merits.

After the court of appeals affirmed the district court, Tax Analysts raised in its petition for rehearing and suggestion for rehearing en banc, as required under Circuit Rule 35, the conflict created by the court's affirmance in this case with the rest of its FOIA jurisprudence regarding the 5 U.S.C. § 552(b)(4) exemption. Subsection (b)(4) provides an exemption to the FOIA for trade secrets and commercial material. Congress intended the exemption to protect private parties when, pursuant to a FOIA request, release of material they provided to a government agency would violate their trade secret or commercial rights in the data. Tax Analysts assumes this is the basis of West's objection to release of the public domain portions of JURIS.

The circuit court's decision permits West, a government contractor, and Justice, an executive agency, to circumvent through the contractual license the burden of proof contemplated by the FOIA exemptions. The license effectively prevents release of the material under FOIA without requiring the agency to prove that the material is exempted from release under subsection (b)(4). Such a license is especially suspect when it is extended to encompass electronic files of material in the public domain that have been processed using government software for a government database.

The FOIA statute does not provide for exemption by contract.

The court denied Tax Analysts' petition for rehearing as well as its suggestion for rehearing en banc.

C. The Factual Dispute

The dispute in this case centers on West's contention that JURIS's public domain portions contain a “West database” or “proprietary” West data. To the contrary, Tax Analysts contends that JURIS contains only JURIS software that manipulates: (1) all of the data collected in JURIS up to the time of West's contract with the Department, the public domain portions of which are part of the subject matter of this action; (2) some original West editorial material processed by West under the contract using JURIS software, which is not the subject of this FOIA request; and (3) nonproprietary public domain data that includes federal case law, also processed by West using JURIS software which are the subject of the request.

[* * * PAGES MISSING FROM SOURCE * * *]

concerning the 1933 and 1934 Securities & Securities and Exchange Commission acts. The jurisdictional question in that case, whether the financial instrument qualified as a “security” under the federal securities statute, is like the FOIA's “agency record” test. The Williamson court found intertwining and remanded for discovery.

In the D.C. Circuit, Herbert v. National Academy of Sciences, 974 F.2d 192, reiterates this simple, consistent, analysis almost verbatim from the Fifth Circuit's Williamson decision. “If [jurisdictional facts] are inextricably intertwined with the merits of the case [the court] should usually defer its jurisdictional decision until the merits are heard . . . this Court has previously indicated that ruling on a Rule 12(b)(1) motion may be improper before the plaintiff has had a chance to discover the facts necessary to establish jurisdiction.” Id., 974 F.2d at 198.

Intertwining shifts the usually wide berth of discretion afforded a district court to determine its own jurisdiction in a non-intertwining Rule 12(b)(1) setting. It instructs the court to stop its jurisdictional assessment and proceed to review the merits. In Williamson v. Tucker, the Fifth Circuit, citing Bell v. Hood, stated, “where the defendant's challenge to the court's jurisdiction is also a challenge to the existence of a federal cause of action, the proper course of action for the district court [where the plaintiff's cause of action is not immaterial or frivolous] is to find that jurisdiction exists and deal with the objection as a direct attack on the merits of the plaintiff's case.” Id., 645 F.2d at 415 (5th Cir. 1981). Thus, when the light of the district court's jurisdictional review occasioned by a Rule 12(b)(1) motion also touches the substantive federal cause of action, the district court must accept jurisdiction and proceed to review the merits of the nonmoving party's action, with appropriate procedural safeguards. Herbert v. National Academy of Sciences, 947 F.2d at 192; Jensen v. Johnson County Youth Baseball League, 838 F. Supp. 1437, 440 (D. Kan. 1993) (“When a federal statute serves as both the basis for the court's subject matter jurisdiction and the plaintiff's substantive claim, a court should assume jurisdiction and resolve the issue on the merits. . . .”).

Williamson v. Tucker's progeny in the Fifth Circuit, Holt v. United States, 46 F.3d 1000 (5th Cir. 1995), citing Wheeler v. Hurdman, described intertwining as “where subject matter jurisdiction is dependent on the same statute which provides the substantive claim.” Id., 46 F.3d at 1003. Also in accord is Jensen v. Johnson County Youth Baseball League, 838 F. Supp. 1437, 1440 (D. Kan. 1993) where the court relied on the Wheeler v. Hurdman test: “The jurisdictional question is intertwined with the merits of the case if subject matter jurisdiction is dependent on the same federal statute which provides the substantive claim in the case.”

C. Intertwining Requires The Court To Afford To The Nonmoving Party The Added Protections Of A Rule 12(b)(6) Or Rule 56 Standard

Holt v. United States, 46 F.3d 1000, and Williamson v. Tucker, 645 F.2d 415, best state the standard to be applied where intertwining exists. The district court's usual analysis under Rule 12(b)(1) shifts and the court is to apply the more favorable Rule 12(b)(6) or Rule 56 standard. This is intended to afford the nonmoving party the higher procedural safeguards appropriate to a review of the merits, which is the effect of a jurisdictional challenge when jurisdiction is set in the same statute as the federal cause of action. The Ninth Circuit also has endorsed this view in Augustine v. United States, 704 F.2d 1074, 1077 (9th Cir. 1983).

This refusal to treat indirect attacks on the merits as Rule 12(b)(1) motions provides, moreover, a greater level of protection to the plaintiff who in truth is facing a challenge to the validity of his claim: the defendant is forced to proceed under Rule 12(b)(6) . . . or Rule 56 . . . both of which place greater restrictions on the court's discretion. The court must take the plaintiff's allegations as true when a Rule 12(b)(6) motion is raised, and in addition must determine that no genuine issue of material fact exists when a Rule 56 motion is granted.

Williamson v. Tucker, 645 F.2d 415, 416.

D. The Courts Below Erred By Allowing Discussion Of The License To Override The Effect Of Intertwining

The courts below erred by allowing consideration of the Rule 12(b)(1) motions, based on West and the Department's interpretation of the disputed license provision, to occur before allowing Tax Analysts to conduct any discovery relevant to the defendants' procedural challenges. Tax Analysts clearly has stated the factual dispute between the parties. It has stated with equal clarity that it is prepared to disprove, and has every reasonable expectation of disproving, West's proprietary claims over the JURIS database. Most of the information needed to do this is under the sole control of the defendants, making Tax Analysts dependent on discovery.

Both West and the Department consistently have urged the courts below to consider the effect of intertwining after review of the effect of the disputed license in the 1988 contract; or, after decision on the Rule 12(b)(1) motions to dismiss without regard to intertwining in the FOIA. This interpretation would gut the very purpose of the doctrine — to provide to the nonmoving party an opportunity for fact-finding appropriate to a challenge to the merits of its cause of action. This is the standard in a Rule 12(b)(6) or Rule 56 challenge to the merits.

E. The Court Incorrectly Applied The Standard Of Review For A Denial Of Discovery As If Jurisdiction And Merits Were Not Intertwined In The FOIA

The court of appeals erred in affirming the district court's reliance on the standard of review appropriate for denial of discovery on a Rule 12(b)(1) motion where there is no intertwining. It is in conflict with every federal court, including this Court, that has addressed intertwining. The appellate court should have shifted its standard to the more protective one afforded to plaintiffs in Rule 12(b)(6) or Rule 56 settings.⁶

Nor did the court of appeals follow even its own law in relying on El Fadi v. Central Bank of Jordan, 75 F.3d 668 (D.C. Cir. 1996) to affirm the district court. In El-Fadl, the D.C. Circuit was clear on the importance of granting some discovery on a motion to dismiss containing a jurisdictional challenge (there, it was a challenge to the court's personal jurisdiction). El-Fadl stands for the proposition that the court will be more protective of the nonmoving party on appeal where no discovery was granted below — Tax Analysts' situation — as opposed to instances where some discovery had been allowed by the district court. See also Crane v. Carr, 814 F.2d 758 (D.C. Cir. 1987) and Edmond v. U.S. Postal Service General Counsel, 953 F.2d 1398 (D.C. Cir. 1992).

Even on a Rule 12(b)(1) motion to dismiss, the D.C. Circuit, again in Herbert v. National Academy of Sciences, 974 F.2d 192, citing its own ruling in Collins v. NY Central System, 327 F.2d 880 (D.C. Cir. 1963) three decades earlier, and the Fifth Circuit in Williamson v. Tucker, 645 F. 2d 404, embraces a similar rule stating that ruling on a 12(b)(1) motion may be improper before the nonmoving party has had a chance to discover facts necessary to establish jurisdiction.

In Wilderness Society v. Griles, 824 F.2d 4, 20 (D.C. Cir. 1987), the D.C. Circuit again held that where the district court holds the plaintiff to the strict Rule 12(b)(1) standard, as the courts did below in this case, it is an abuse of discretion to hold such stringent review while denying discovery of the “very material relevant” to the stringent review. Even in Wilderness Society the plaintiff was granted some discovery: Tax Analysts has had none in this case with respect to the legal effect and scope of the disputed license.

II. THE DECISIONS OF THE COURTS BELOW PERMIT CONTRACTS BETWEEN PRIVATE PARTIES AND THE U.S. GOVERNMENT TO CIRCUMVENT THE FOIA. THIS NEWLY SANCTIONED, NONSTATUTORY “CONTRACT" EXEMPTION TO THE FOIA WILL ENCOURAGE GOVERNMENT CONTRACTORS TO USE LICENSES TO AVOID THE MORE RIGOROUS BURDEN OF PROOF FOR THE FOIA'S EXEMPTION FROM DISCLOSURE OF TRADE SECRETS AND COMMERCIAL AND CONFIDENTIAL INFORMATION UNDER 5 U.S.C. § 552(b)(4). THIS IS IN CLEAR CONFLICT WITH THE INTENT OF CONGRESS WHEN IT PROVIDED A STATUTORY SCHEME FOR EXEMPTION UNDER THE FOIA IN THE PROVISIONS OF SUBSECTION (b)(4).

A. The Decision Of The District Of Columbia Circuit Has Improperly Adopted A New, Nonstatutory Exemption To The FOIA For Private-Party Contracts

The Department and West have opposed Tax Analysts' FOIA request on the basis of the 1988 contract between the Department and West. The D.C. Circuit's decision effectively sanctioned a private party's use of a license to prohibit public disclosure of public domain data in clear contravention of Congress's intent in enacting the FOIA.

Under the new, nonstatutory “contract” exemption, the United States government will now be able to permit private data providers to exercise control over the disclosure of public domain information that they provide to the government, including the federal and state case law, administrative materials, and legal briefs contained in the JURIS database. Under the D.C. Circuit's ruling, a private data provider, by inserting a nondisclosure provision in a contract or license with the government, can prohibit unilaterally public access to government information.

Congress declared a different intent when it enacted the FOIA. Congress designed the FOIA to ensure “full agency disclosure unless information is exempted under clearly delineated statutory language. . . .” S. Rep. No. 813, 89th Cong., 1st Sess. 3 (1965) (emphasis added). The statute itself “does not authorize withholding of information or limit the availability of records to the public, except as specifically stated in this section.” § 552(c).

Technology long has posed a special threat to the FOIA's safeguards of public access. The Administrative Conference of the United States cautioned that “[a]n agency generally should not grant a private party exclusive control of its electronic information or of the acquisition or release thereof. Nor should the agency itself as a general matter maintain such control in the absence of a compelling public purpose.” If an agency wants to “enter into an exclusive arrangement providing a private sector vendor with a preferential right to electronic information,” the agency should “guard against the possibility that the arrangement may be inconsistent with its responsibilities under the FOIA or may impair the ability of the agency and the public to benefit from subsequent technological developments.” Recommendation of the Admin. Conf, of U.S., Federal Agency Use of Computers in Acquiring and Releasing Information, 1 CFR § 305.88-10(F) at p. 230 (1991) (emphasis added).

In response to technological developments, Congress recently amended the FOIA explicitly to extend the statute's disclosure imperative to electronic records. “The Electronic Freedom of Information Act Amendments of 1996,” Pub. L. No. 104-231, 110 Stat 2422. The amendments, however, do not provide a “contract” exemption to disclosure or address the concerns of private control of government records raised in the Administrative Conference's recommendation.

There is no basis in prior case law for the claim that the FOIA can be overriden by contract. The D.C. Circuit, in a case later affirmed by this Court, stated emphatically that “'refusal to release documents . . . for any reason other than those set forth in the [FOIA]'s enumerated exceptions would constitute “withholding”.'” Tax Analysts v. U.S. Dep't of Justice, 845 F.2d 1060, 1064 (D.C. Cir. 1988), aff'd, 492 U.S. 136 (1989) (emphasis added, footnote omitted), citing McGehee v. CIA, 697 F.2d 1095, 1110, aff'd in part and vacated in part on other grounds, 711 F.2d 1076 (D.C. Cir. 1983).

A nonstatutory “contract” exemption to the FOIA eviscerates the FOIA and this Court's FOIA jurisprudence as articulated in U.S. Dep't of Justice v. Tax Analysts, 492 U.S. 136 (1989). “An agency must disclose agency records to any person under § 552(a), 'unless [the records] may be withheld pursuant to one of the nine enumerated exemptions listed in § 552(b).' Consistent with the Act's goal of broad disclosure, these exemptions consistently have been given a narrow compass.” Id. at 151 (emphasis added), citing U.S. Dep't of Justice v. Julian, 486 U.S. 1, 8 (1988). This Court has taken an exclusive view of the exemption scheme, stating that agency records “which do not fall within one of the exemptions are 'improperly' withheld.” U.S. Dep't of Justice v. Tax Analysts, 492 U.S. at 151.

The D.C. Circuit's decision to permit a new, nonstatutory “contract” exemption to the FOIA conflicts with this Court's fidelity to Congress's intention to apply the disclosure imperative broadly, and the exemptions narrowly.

B. The District Of Columbia Circuit Erred By Not Treating The Department Of Justice's Denial Of The FOIA Request As An Assertion Of A 5 U.S.C. § 552(b)(4) Exemption

1. Summary

The Department and West cleverly have disguised an assertion of a 5 U.S.C. § 552(b)(4) exemption, which protects from release trade secrets and commercial, confidential information, in the camouflage of a license to avoid the FOIA's rigorous standards for exemption. Despite the decoy argument, the FOIA does not recognize a contract exemption from disclosure. Therefore, the Department's and West's argument must be regarded as an assertion of a de facto subsection (b)(4) exemption.

The D.C. Circuit, like the district court before it, erred by not treating the Department's denial of Tax Analysts' FOIA request for release of the JURIS database as an assertion of the § 552(b)(4) exemption. Had the court conducted the subsection (b)(4) exemption analysis, the Department and West would have failed to meet the burden of proof to withhold government information from public disclosure.

2. The Department bears burden of proving that information sought by Tax Analysts qualifies for the subsection (b)(4) exemption

This Court has held that an agency must disclose agency records to any person under § 552(a) unless the agency may withhold the records under one of the nine enumerated exemptions listed in § 552(b). See generally supra U.S. Dep't of Justice v. Tax Analysts, 492 U.S. 136, and U.S. Dep't of Justice v. Julian, 486 U.S. 1.

Relying on the untested assertion that the JURIS database contains West proprietary information not subject to disclosure, the Department has invoked the subsection (b)(4) exemption for trade secrets and commercial information that is privileged or confidential.

It is well established that the agency invoking the subsection (b)(4) exemption bears the burden of proving that it applies to the particular FOIA request. National Parks and Conservation Ass'n v. Morton, 498 F.2d 765, 770 (D.C. Cir. 1974). Likewise, the test is clear and uncomplicated: The agency must show that disclosure would: (1) impair the government's ability to obtain necessary information in the future; or (2) cause substantial harm to the competitive position of the person from whom the information was obtained. Id. at 770; Frazee v. U.S. Forest Service, 97 F.3d 367, 371 (9th Cir. 1996).

3. The Department cannot sustain its burden of proof for the subsection (b)(4) exemption; the exemption does not apply to the JURIS database

The Department of Justice cannot sustain its burden of proof under National Parks. First, for purposes of the FOIA, a trade secret is “a secret, commercially viable plan, formula, process, or device that is used for making, preparing, compounding, or processing trade commodities and that can be said to be the product of either innovation or substantial effort.” Public Citizen Health Research Group v. F.D.A., 704 F.2d 1280, 1288 (D.C. Cir. 1983); Northwest Coalition for Alt. to Pestic. v. Browner, 941 F. Supp. 197, 201-02 (D.D.C. 1996). Neither the JURIS software nor its underlying data is a West “trade secret”: the government created and implemented the computer operating program, and public officials, at taxpayers expense, authored the judicial decisions and administrative materials. Clearly, a government contractor cannot borrow an agency-created software program and claim it as a trade secret.

Moreover, computer software “uniquely suited to its underlying database” that “perpetuate[s] knowledge” responsive to a FOIA request is an agency record subject to the FOIA. Cleary, Gottlieb, Steen & Hamilton v. Dep't of Health and Human Services, 844 F. Supp. 770 (D.D.C. 1993). See also DeLorme Publishing Co. v. NOAA of U.S. Dep't of Commerce, 917 F. Supp. 867 (D. Me. 1996) (electronic compilations read by computers are agency records subject to disclosure under the FOIA unless a specific exemption applies.).

Even assuming arguendo that the JURIS database contains original West editorial material run on the government-created software, Tax Analysts has not requested this material: Tax Analysts seeks only public domain data in electronic form. Tax Analysts' FOIA request specifically does not seek release of proprietary information belonging to West or any other private publisher.

The data Tax Analysts seeks are neither trade secrets nor commercial information. Rather, the data and the software are public domain material and not privileged or confidential. Therefore, the National Parks test for disclosure is inapposite. Even if the National Parks test did apply, the requested information qualifies for disclosure: release neither will impair the government's ability to enter into contracts for data processing and information management in the future nor cause substantial competitive harm to West, which remains the dominant purveyor of federal and state case law resource materials in the United States. Frazee v. U.S. Forest Service, 97 F.3d 367, 371; Worthington Compressors, Inc. v. Costle, 662 F.2d 45 (D.C. Cir. 1981); Northwest Coalition for Alt. to Pestic. v. Browner, 941 F. Supp. 197.

Third, an agency promise of confidentiality to an information provider does not override any part of the FOIA. Public Citizen Health Research Group v. F.D.A., 704 F.2d 1280, 1287 (agencies cannot alter dictates of the FOIA by their own express or implied promises of confidentiality). See also Petkas v. Stoats, 501 F.2d 887 (D.C. Cir. 1974) (promise of confidentiality held not to be sufficient to defeat right of disclosure); Ackerly v. Ley, 420 F.2d 1336, 1339-40, n.3 (D.C. Cir. 1969) (“It will obviously not be enough for the agency to assert simply that it received the [information] under a pledge of confidentiality to the one who supplied it. Undertakings of that nature cannot . . . override the [FOIA].”). Other circuits have reached similar conclusions. See 9 to 5 Organization for Women Office Workers v. Board of Governors of Fed. Res. Sys., 721 F.2d 1, 12 (1st Cir. 1983) where Judge Breyer wrote that “Congress did not intend to apply the word confidential automatically whenever an agency official agrees to a business request to keep information confidential. Otherwise, given the temptation of government and business officials to follow the path of least resistance and say 'confidential' whenever they seek to satisfy the government's vast information needs, the exemption would expand beyond what Congress intended.”; Robles v. EPA, 484 F.2d 843 (4th Cir. 1973) (promise of confidentiality not sufficient to defeat right of disclosure); and Burnside-Ott Aviation Training v. United States, 617 F. Supp. 279 (D.C. Fla. 1985) (contractual promise by Department of Navy to protect confidentiality of contractor's technical proposal and final bid could not prevent disclosure of otherwise unprotected information pursuant to FOIA request).

The Department essentially made a contractual promise to keep the JURIS database confidential by agreeing to transfer the database to West upon expiration of the 1988 contract. Congress intended the federal courts to exercise ultimate discretion over confidentiality, not executive branch agencies. Public Citizen Health Research Group v. F.D.A., 704 F.2d 1280, 1287 (“Congress has made clear . . . that the federal courts, and not the administrative agencies, are ultimately responsible for construing . . . the FOIA. . . .”) Under the reasoning of Public Citizen, the Department lacked the authority to declare the JURIS database “confidential” and contractually guarantee its nondisclosure to the public under the FOIA. Only the federal courts can make such a determination. The Department's promise of confidentiality to West exceeded the agency's statutory authority. As a result, the Department's contractual promise of confidentiality is a legal nullity and has no relevance to the subsection (b)(4) analysis that should govern the court's analysis of West's and the Department's claims.

III. THIS COURT SHOULD RESOLVE THE CONFLICT CREATED BY THE DISTRICT OF COLUMBIA CIRCUIT'S DECISION BASED IN PART ON ProCD v. ZEIDENBERG AND THE SEVENTH CIRCUIT'S HOLDING IN THAT CASE. AS DISSEMINATION OF ELECTRONIC DATA AND SOFTWARE ARE BECOMING MORE PREVALENT IN GOVERNMENT CONTRACTING, THIS COURT SHOULD CLARIFY THE LEGAL RULE GOVERNING A PRIVATE CONTRACTOR'S PROPRIETARY RIGHTS IN PUBLIC DOMAIN MATERIAL IN A GOVERNMENT DATABASE.

In affirming the district court's decision, the court of appeals incorrectly relied on the Seventh Circuit's holding in ProCD v. Zeidenberg, 86 F.3d 1447 (7th Cir. 1996). ProCD stands for the proposition that “shrinkwrap” licenses which increasingly are accompanying proprietary software packages may extend to software in proprietary databases containing public domain data.

A key element in that case was the existence of proprietary software, without which, the court acknowledged, the public domain data in the database could be used freely. “[Without the software] [e]veryone remains free to copy and disseminate all 3,000 telephone books that have been incorporated into ProCD's database.”. Id. at 1455. Mr. Zeidenberg, however, had downloaded onto the Internet ProCD's database — the software package with telephone listings — to resell it at a lower cost, complete with ProCD's proprietary formatting, searching, and retrieval software. The court was clear in distinguishing that public domain data may be copied and reused while proprietary software may not. Here, the JURIS database is government-owned, not private property.

Moreover relying on this Court's holding in Aronson v. Quick Point Pencil Co., 440 U.S. 257 (1979), regarding the interplay between contract and intellectual property law, the ProCD court also opined that even an enforceable contract between parties does not remove data in the public domain from that status: “Aronson emphasized that enforcement of the contract between Aronson and Quick Point Pencil would not withdraw any information from the public domain.” Id., 86 F.3d at 1455.

In this case, there is no proof that West conveyed proprietary software contained in JURIS. Tax Analysts does not seek a proprietary West database, such as Westlaw, but the JURIS database running on government-created and owned JURIS software without any West proprietary software.

In Hill v. Gateway, 105 F.2d 1147 (7th Cir. 1997), the Seventh Circuit's only pronouncement on ProCD since it was decided, the court again was asked to determine the effect of contractual terms contained in a form not seen by the purchaser prior to purchase; in this case, included with the packaging of a computer ordered by telephone. Are the terms as conveyed effective in binding the purchaser who was not aware of them before purchase? The court, relying on ProCD for guidance on the contract issue, refers often to the case: "ProCD v. Zeidenberg . . . holds that terms inside a box of software bind consumers who use the software. . . . The district court concluded in ProCD that the contract is formed when the consumer pays for the software . . . Plaintiffs ask us to limit ProCD to software, but where's the sense in that? ProCD is about the law of contract, not the law of software. Id., 105 F.3d at 1148, 1149 (emphasis added).

Although the parties were never asked to brief the question, it is axiomatic that the mere act of scanning print data into electronic form, the process whereby print or analog text is converted into electronic “0s and 1s,” does not confer any ownership or other proprietary rights in the data itself. The data retains its legal status regardless of the medium.⁷ If the data itself is not proprietary, which it is not with respect to the subject of Tax Analysts' FOIA request, then it is necessary to show that something else in the JURIS database is proprietary to West to support West's proprietary claims. Absent proof in the record of any such proprietary element, the court of appeals erred in basing its decision in part on this erroneous factual assumption.

Indeed, the facts as they have been relayed to Tax Analysts from persons familiar with the creation and operation of the database lead to the only reasonable factual conclusion: The nonproprietary portions of JURIS contain only government software and public domain texts written by government officials, including judges and members of Congress, none of which provide the grounds for a West license.⁸ Tax Analysts should be given the chance to prove this.

CONLUSION

The petition for a writ of certiorari should be granted and the case remanded to the United States District Court for the District of Columbia for appropriate discovery.

Respectfully submitted,

CONSTANCE M. SPHEERIS
Counsel of Record
THOMAS F. FIELD
LOUIS M. LYONS, II
TAX ANALYSTS
Attorneys for Petitioner
6830 North Fairfax Drive
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