BILL ANALYSIS                                                                                                                                                                                                    






                 SENATE JUDICIARY COMMITTEE
                  Adam B. Schiff, Chairman
                 1999-2000 Regular Session


SB 1146                                                S
Senator Burton                                         B
As Amended June 21, 1999
Hearing Date:  June 22, 1999                           1
Health and Safety Code                                 1
GWW:cjt                                                4
                                                       6
                               
                          SUBJECT
                               
           Motor Vehicle Repair and Trade Secrets
 -Disclosure of Trade Secret Information for the Repair and  
Remanufacture of Emissions-Related Vehicle Parts Upon Board  
                          Finding-
     -No Prospective Certification Unless Violation is  
                        Corrected-  

                         DESCRIPTION  

This bill would require the California Air Resources Board  
("CARB" or board) to adopt regulations within one year, to  
the extent not limited or barred by federal law, to require  
automobile manufacturers  ("auto makers") to disclose  
specified information for the repair or manufacture of  
emissions-related motor vehicle parts to any person engaged  
in the business of servicing or repairing motor vehicles or  
engaged in the manufacture or remanufacture of  
emissions-related motor vehicle parts.  (See  Changes to  
Existing Law  for the required disclosures.) 

Any information that an auto maker can demonstrate to the  
board, on a case-by-case basis, is trade secret or  
proprietary information would be exempt from disclosure  
unless the board finds that disclosure is necessary to  
mitigate any anticompetitive effects or is otherwise in the  
public interest.  

Where the board requires the disclosure of trade secret or  
proprietary information, the bill would require the board's  
adopted regulations to:
                                                       
(more)



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   permit the imposition of reasonable business conditions  
   as a condition of disclosure, and the imposition of  
   punitive sanctions for an improper release of the  
   information to a competitor of the manufacturer;
   provide fair and reasonable compensation for required  
   disclosure of a trade secret, and provide for the  
   dissemination of the trade secret information and  
   collection of fair and reasonable licensing fees through  
   licensing agreements.

If the board determines that disclosure of any of the  
required information constitutes a taking, the bill would  
specify that a jury trial, unless waived, would determine  
the amount of compensation for that taking. 

If a auto manufacturer fails to comply with a requirement  
after 30 days of receiving a warning of non-compliance, the  
board would be required to immediately fine the  
manufacturer $25,000 per day until the violation is  
corrected.  If the violation is not corrected within 90  
days, the board would be required to suspend the  
certification process for any motor vehicle or engine  
submitted for CARB approval by that manufacturer which has  
not yet been certified.  The bill would provide for a  
hearing upon request prior to the imposition of the  
financial or "no certification" penalty. 
  
                          BACKGROUND
  
The federal Clean Air Act ("CAA") requires the  
Environmental Protection Agency ("EPA") to mandate and  
regulate the installation of on-board diagnostic ("OBD")  
computers in new cars beginning with the 1994 model year in  
order to monitor, control, and record emissions emitted by  
automobile engines.  OBD systems also store information  
about emissions systems faults for later retrieval and warn  
drivers by way of malfunction lights to seek repairs of  
identified faults. 

Pursuant to California's unique authority under the CAA to  
establish its own vehicle emissions standards for new cars,  
CARB revised its regulations for use in 1994 and later  
model year cars to require the use of OBD II devices.  To  
address concerns about aftermarket tampering of the  
computer chips in OBD systems, CARB's OBD II regulations  
                                                             




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requires the computer monitoring system to be tamper-proof  
so that its computer-code operating parameters cannot be  
altered without specialized tools and procedures. (Title  
13, CCR, Section 1968.1(d)(1993).)  Thus, prior to selling  
any new car or new car engine in California, automobile  
manufacturers must obtain certification from CARB that the  
car and engine comply with CARB's OBD II requirements.  

(Prior to adopting its own standards, California must  
determine that its standards will be "in the aggregate, at  
least as protective of public health and welfare as  
applicable Federal standards" and must receive a preemption  
waiver from the EPA before adopting and enforcing the  
standards.  In 1996, CARB obtained a waiver of federal  
preemption for its OBD II regulations.)  

Proponents of SB 1146 contend that auto makers have used  
the regulations and designed the OBD II systems in such a  
way as to lock out competitors in the aftermarket parts  
replacement market. Proponents of SB 1146 thus seek to  
persuade the Legislature to exercise its police powers to  
compel the disclosure of specified information to enable  
aftermarket parts manufacturers to build aftermarket parts  
that are compatible with the OBD II systems.     
                               
  Opponents contend that the bill, particularly proposed  
Section 43105.5(a)(4) (henceforth "(a)(4)" - which would  
require disclosure to the aftermarket parts manufacturers  
of the operating parameters, electronic interface and  
performance specifications and transfer functions for all  
parts monitored by the OBD system), would compel automobile  
makers to disclose trade secret and proprietary information  
in violation of their intellectual property and contract  
rights. 
                               
  The bill was amended on June 21 to require that, prior to  
compelled disclosure of  trade secret information, the  
board must find that disclosure is necessary to mitigate  
any anticompetitive effects or is otherwise in the public  
interest.

                   CHANGES TO EXISTING LAW
  
  Existing law  authorizes the Air Resources Board to adopt  
and implement emission standards for new motor vehicles to  
                                                             




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control vehicle emissions. 
  


Existing law  provides for the protection of a "trade  
secret," defined as "information that: 1) has independent  
economic value; 2) is not generally known in the industry,  
to the public, or to others who can realize economic value  
from its disclosure or use; and 3) is the subject of  
efforts that are reasonable under the circumstances to  
maintain its secrecy."  Trade secret information includes,  
among other things, formula, patterns, compilations,  
programs, devices, methods, techniques, and processes.   
(Civil Code Section 3426.1(d).) 

  Existing federal law  also provides for the protection of  
intellectual property through the federal Patent Act and  
the federal Copyright Act, which includes the Semiconductor  
Chip Protection Act.       

  This bill, under proposed Section 43105.5(a), would require  
CARB to adopt regulations within one year, to the extent  
permitted by federal law, that would require a motor  
vehicle manufacturer to:

1)Place on the Internet the full contents of all manuals,  
  technical service bulletins, and training materials  
  regarding emissions-related motor vehicle parts, within a  
  reasonable period of time.
2)Make available, within a reasonable period of time, for  
  sale at a non-discriminatory price to auto repair persons  
  and aftermarket parts makers the car makers' specific  
  diagnostic tools, and make available to equipment and  
  tool companies enhanced information about the tools in  
  electronic format. 
3)Provide, within a reasonable period of time, equipment  
  and tool companies with information that will allow a  
  company to adopt into aftermarket scan tools the same  
  reprogramming capability as is provided by the  
  manufacturer to its dealerships in cases where the car  
  maker uses reprogrammable computer chips in their motor  
  vehicles.
4)Make available to all covered persons, within a  
  reasonable period of time, a description of the operating  
  parameters, electronic interface and performance  
                                                             




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  specifications, including transfer functions, for all  
  emissions-related motor vehicle parts monitored by the  
  on-board diagnostic system.  Such information shall be  
  provided for each monitoring system utilized by a  
  manufacturer that has the potential of setting a fault  
  code or illuminating an on-board diagnostic (OBD II and  
  future implementation) malfunction indicator light.  The   
  information required shall not include algorithms,  
  software code, and specific calibration data beyond what  
  is available on Mode $06 of the SAEJ1979 Generic Scan  
  Tool.
5)Not employ any access code or any type of encryption  
  which would prevent a vehicle owner from using a part  
  which has not been manufactured by that manufacturer or  
  any of its original equipment suppliers.
 (6)Provide information regarding initialization procedures  
   for dealing with immobilizer circuits (or other lock-out  
   devices) necessary for properly repairing, rebuilding,  
   installing, or otherwise reinitializing vehicle on-board  
   computers that employ integral vehicle security systems.
(7)  Provide the information in a readily accessible  
  electronic format that is compatible with computer  
  systems commonly used by covered persons and that is  
  accessible without the need for any decoding information  
  or device.
  
This bill  would: 
 Allow a vehicle manufacturer to conditionally protect  
  information from required disclosure if it could  
  demonstrate to the board, on a case-by-case basis that  
  the information is proprietary or a trade secret.
 Allow the board to compel the disclosure of trade secret  
  or proprietary information if it finds that disclosure  
  "is necessary to mitigate anticompetitive effects or is  
  otherwise in the public interest." 
 Require the board to adopt regulations providing for: 1)  
  the payment of fair and reasonable compensation for any  
  required disclosure of trade secret information, and 2)  
  the dissemination of the trade secret information and  
  collection of licensing fees through licensing  
  agreements.  
 Provide for a jury trial, unless waived, to determine  
  just compensation if the board finds that the required  
  disclosure of a trade secret constitutes a taking;
 Provide that the Act is not intended to permit  
                                                             




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  infringement of intellectual property rights protected by  
  federal patent, copyright or trademark laws "in so far as  
  those rights are exercised consistently with other  
  federal law."   
 Provide for a mandatory fine of $25,000 if a violation is  
  not corrected after 30 days notice of the violation, and  
  for a halt in the certification process of the auto  
  makers' cars and engines not yet certified if a violation  
  is not corrected within another 90 days.  A car maker may  
  request a hearing within 30 days of the violation notice  
  to contest the violation.   
  
  

                           COMMENT
  
1.  Should auto makers be required to disclose and share  
  trade secret and proprietary information for the repair  
  or manufacture of emissions-related vehicle parts, as  
  proposed?  

  Proponents, a coalition including both the automotive  
  service/repair industry and the aftermarket parts  
  manufacturers, contend that auto makers have used  
  California's regulatory scheme requiring the use of OBD  
  systems to try to gain control over the automotive  
  service and replacement parts markets.  California  
  Consumer Choice ("CCC"), the umbrella coalition, contends  
  that auto makers have used the regulations to "lock out  
  competitors and favor their own franchised car dealers by  
  restricting access to information that would allow others  
  to develop or rebuild compatible (and potentially more  
  affordable) aftermarket parts; limiting independent  
  repair shops' ready access to key information about the  
  OBD system which would allow them to compete for  
  emissions-related maintenance and repairs on late model  
  vehicles; and attaching exorbitant price tags on  
  diagnostic and repair tools used in emissions-related  
  service, so smaller shops are unable to afford them.  

  CCC contends that the Legislature should use its police  
  powers to order the regulations be amended to mitigate  
  its anticompetitive effects so that independent repair  
  shops and aftermarket parts makers may compete on a level  
  playing field for automotive repair and replacement part  
                                                             




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  dollars, a combined $15.6 billion industry in California.  
   CCC also contends that monopolization of the aftermarket  
  service and parts market by auto makers and their dealers  
  will cost consumers billions of dollars in extra repair  
  costs.     

  Opponents, motor vehicle manufacturers, new car dealers,  
  and producers of original and replacement manufacturers'  
  parts, oppose the compelled disclosure of trade secret or  
  proprietary information.  They contend that this bill is  
  a continuation of an unsuccessful ten-year campaign by  
  aftermarket parts makers to force auto makers to turn  
  over their intellectual property so that those  
  competitors can more easily and cheaply make aftermarket  
  parts rather than having to conduct their own research,  
  development and testing.  Opponents contend that  
  Congress, the United States EPA, CARB, and the United  
  States Court of Appeal of the District of Columbia  
  Circuit have all rejected the claim of aftermarket parts  
  manufacturers that they are entitled to receive trade  
  secret and proprietary information needed to make  
  replacement parts. (See Motor & Equipment Mfrs. Assn. v.  
  Nichols, 142 F.3d 449, 465 (D.C. Cir. 1998), henceforth  
  "MEMA.")

  SHOULD THE LEGISLATURE REQUIRE CARB TO PROVIDE TO  
  AFTERMARKET PARTS MAKERS WHAT CONGRESS, THE US EPA, AND  
  CARB HAS THUS FAR REFUSED TO PROVIDE?

  Proponents respond that MEMA only rejected the argument  
  that the Clean Air Act and its "Service Information Rule"  
  requires auto makers to furnish aftermarket parts  
  manufacturers with OBD II systems information, that MEMA  
  did not address the anticompetitive effects of  
  California's regulations, and that MEMA in fact  
  demonstrates the need for the Legislature to intervene  
  and use its police powers to re-balance the marketplace.   
   

  Opponents also contend that SB 1146 would require auto  
  makers to subsidize potential competitors by furnishing  
  them with the technical specifications needed to build  
  competing replacement parts.  They assert that the  
  "lock-out" argument is a Trojan horse and point out that  
  the sponsors have not cited a single case of a  
                                                             




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  reversed-engineered aftermarket part being rejected by  
  the OBD system.  Opponents also assert that expansion of  
  the Service Information Rule to require auto makers to  
  furnish aftermarket parts makers with the OBD systems  
  information conflicts with Congressional intent, is  
  preempted by federal law, and, if implemented, would  
  jeopardize the state's  exemption under the Clean Air  
  Act.  (Perhaps in recognition of federal preemption and  
  waiver issues, the bill would qualify its required  
  adoption of regulations "to the extent not limited or  
  prohibited by federal law.)          

  In short, proponents of SB 1146 say they cannot build  
  compatible aftermarket parts without the requested OBD II  
  information, and that the withholding of the essential  
  OBD II information effectively blocks them from  
  competing, thereby giving manufacturers a monopoly in the  
  aftermarket parts market.  They argue that public  
  interest would be served by requiring auto makers to  
  disclose the needed information to build compatible  
  aftermarket parts, thus  re-balancing the marketplace and  
  providing greater consumer choices.  The sponsors further  
  contend that they are not seeking the technology to build  
  the parts, only the interface and performance  
  specifications so that the part would be accepted by the  
  OBD II system.   

  Opponents respond that compatible aftermarket parts are  
  commonly reverse-engineered, but that the aftermarket  
  parts makers are seeking to avoid the   
  reverse-engineering costs by instead requiring the auto  
  makers to disclose the data needed to build compatible  
  parts.  Opponents also reject the claim that auto makers  
  have a monopoly on aftermarket service and parts, stating  
  the their collective marketshare in the service and  
  repair industry is about 30% to 40%, and assert that its  
  share is far less than the 75% to 80% marketshare  
  required for a monopoly finding under antitrust law.  
  While the repair market may not be the relevant market to  
  gauge if an auto maker has a monopoly in the replacement  
  parts market, the sponsors have not provided any  
  statistical evidence showing that the auto makers'  
  marketshare in the aftermarket parts market supports a  
  monopoly finding.

                                                             




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2.  Should an auto maker's trade secret information relating  
  to its OBD systems be subject to disclosure upon a board  
  finding that disclosure is necessary to mitigate  
  anticompetitive effects or is otherwise in the public  
  interest?  

   The June 21 amendments would require a CARB finding prior  
  to disclosure of trade secret information being mandated.  
   Prior to the amendment, the bill sought to require trade  
  secret disclosures, across the board, as a matter of law.  
   The following reasons are offered for disclosure upon a  
  CARB finding:    
       CARB has the better expertise to analyze the  
     effects of disclosure or non-disclosure on the  
     availability of compatible aftermarket parts and  
     whether its rules result in any anticompetitive  
     effects which should be mitigated.    
       CARB promulgated the OBD II regulations and has the  
     responsibility to ensure that its operation protects  
     public health and welfare "in the aggregate, at least  
     as protective of applicable federal standards" in  
     order to preserve the federal EPA waiver.  Expansion  
     of the federal "Service Information Rule" to include  
     disclosure of OBD information for the manufacture of  
     replacement parts may require a new waiver ruling.  
       CARB would also be able to better assess whether  
     the greater availability and use of aftermarket parts  
     (which may be less precise in its tolerances in order  
     to provide greater utility to a greater number of  
     vehicles) will result in more vehicle emissions.   
     Greater emissions could jeopardize the waiver.          

       Review and a finding by CARB would also enable a  
     balancing of the need for disclosure against any risk  
     of tampering, which would undermine the efficacy of  
     the OBD II systems.       
       The disclosures required by (a)(4) particularly  
     involve trade secrets and proprietary information.  As  
     originally proposed, the bill would have required the  
     disclosure of trade secrets without a particularized  
     showing of public need or anticompetitive effects.   
     CARB could make the appropriate case-by-case, or  
     part-by-part analysis.  
       Any taking of trade secrets for a public use  
     require the payment of just compensation.  (See  
                                                             




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     Ruchelshaus v. Monsanto Co., 467 U.S. 986 (1984.)  If  
     a  compelled disclosure is found to constitute a  
     taking, takings on a part-by-part basis will involve  
     fewer issues of just compensation.  A wholesale taking  
     will raise numerous just compensation claims.  

  While a prerequisite board finding is a significant  
  narrowing of the bill, opponents contend that its broad  
  standards would not protect an auto maker's trade secrets  
  from unfair use by competitors in the aftermarket parts  
  industry.  In particular, opponents object that  
  disclosure could be compelled solely upon a public  
  interest finding, which they assert is such a vague  
  standard that it would provide CARB with far too much  
  discretion.  Opponents contend, instead, forced  
  disclosure of trade secrets should be based on a finding  
  that "without disclosure, there will be a substantial  
  lessening of competition or tendency to create a line of  
  monopoly in any line of commerce."  In effect, opponents  
  propose a substitute test similar to the standard used by  
  a court to determine anticompetitive effects.  The  
  sponsors say the opponents' proposal would gut the bill.   
      
     
  In support of SB 1146, the sponsors cite Proposition 65  
  as one example where manufacturers are compelled to  
  publicly disclose hazardous chemicals in a public  
  building, as a matter of public interest.  They also cite  
  Corn Products Refining Co. v. Eddy, 249 U.S. 427 (1919),  
  as quoted in Ruchelshaus v. Monsanto, 467 U.S. 986, 1008  
  (1984), in which the US Supreme Court stated: "[t]he  
  right of a manufacturer to maintain secrecy as to his  
  compounds and processes must be held subject to the right  
  of the State, in the exercise of its police power and in  
  the promotion of fair dealing, to require that the nature  
  of the product be fairly set forth." 

  Corn Products, however, pertained to required disclosures  
  under a food ingredient labeling law enacted to secure  
  freedom from adulteration and misbranding, so that  
  purchases are not "mislead with respect to the  
  wholesomeness or food value of the compound."  Id. at   
  431.  That case did not, as here, involve required  
  disclosures of trade secret information for the purpose  
  of enabling competitors to build competing products. 
                                                             




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   3.  Measure attempts to distinguish between permitted  
  regulatory disclosure requirements and "taking" of trade  
  secret information which requires just compensation; use  
  of alternative licensing system
   
   Trade secrets are classified as property and are  
  constitutionally protected against taking without  
  compensation.  (Ruckelshaus v. Monsanto Co., supra.   The  
  California Constitution, Article I, Section 19, provides  
  a right to have a jury trial to ascertain just  
  compensation for a taking.

  Under SB 1146, if the board requires the disclosure of  
  proprietary or trade secret information, the board's  
  regulations would require payment of fair and reasonable   
  compensation to the vehicle manufacturer for the required  
  disclosure of trade secret information.  If the required  
  disclosure constitutes a "taking," the auto maker would  
  be entitled to a jury trial to determine the  
  compensation, unless the jury trial right is waived.

  According to the sponsor, the bill properly distinguishes  
  between permitted required disclosures of trade secrets,  
  such as where the government requires disclosure as a  
  condition of seeking registration, and other forced  
  disclosures which are a taking and which require just  
  compensation.  The requirement to disclose information as  
  a condition of seeking future CARB certification and the  
  proposed licensing scheme and collection of licensing  
  fees are viewed by the sponsors as an appropriate  
  exercise of police powers such that the required trade  
  secret disclosures would not  constitute a "taking."  The  
  proposal will doubtlessly be litigated.
4.  Does federal case law support the constitutionality of  
  this proposal? 
   
  The sponsors cite Monsanto as supporting  
  administratively-compelled disclosure in the public  
  interest, as proposed by  SB 1146.  Monsanto, a complex  
  case involving trade secret rights under three versions  
  of the Federal Insecticide, Fungicide, and Rodenticide  
  Act (FIFRA), held that (as to post-1978 cases) where the  
  act did not provide express protection for trade secrets  
  and a manufacturer knew that data being submitted to a  
                                                             




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  regulatory agency could be used or disclosed by the  
  agency in specified ways, a voluntary submission of data  
  by an applicant in exchange for the economic advantages  
  of registration does not constitute a taking of property.  
   Those economic advantages included an exclusive 10-year  
  use for data on new active ingredients and a right to  
  compensation for 15 years if the manufacturer's   
  submitted data is used and considered  in support of  
  another manufacturer's registration application for a  
  similar pesticide ("data consideration").  The post-1978  
  law specifically allowed all health, safety, and  
  environmental data to be divulged upon request,  
  notwithstanding trade secret claims, and allowed the  
  revelation of manufacturing or quality control processes  
  upon an EPA determination that such disclosure was  
  "necessary to protect against an unreasonable risk of  
  injury to health or the environment. Supra, at 995-996.  

  Under these circumstances, the court reasoned that  
  Monsanto did not have a reasonable investment-backed  
  expectation that its trade secret information would be  
  kept secret if provided to the government.  A similar  
  ruling was handed down for the 1948 through 1972 law,  
                                                                     which was primarily a licensing and labeling statute, and  
  which prohibited disclosure of any information relative  
  to formula of products, but was silent with respect to  
  the disclosure of any of the health and safety data  
  submitted with an application.  

  In contrast, for the period between 1972 and 1978, during  
  which FIFRA required disclosures to the EPA and the  
  public of environmental, health, and safety data, but  
  provided specific trade secrets exemptions and prohibited  
  EPA from publishing the data, the Court held that the  
  uncompensated use or disclosure of trade secret  
  information constituted a taking of property.  See id. at  
  1010-1014.  During this period, data consideration was  
  allowed if the original applicant owner of the data  
  agreed to and was paid for that use.            

  The sponsors assert that the analogy between Monsanto and  
  SB 1146's required disclosure and licensing scheme could  
  hardly be more clear.
              
  Opponents disagree, stating the uses and disclosures  
                                                             




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  under FIFRA, as well as the character of the information  
  being disclosed, are fundamentally different than the  
  disclosures required by SB 1146.  Under FIFRA,  
  disclosures of trade secret information are limited to  
  cases where EPA finds disclosure necessary to protect  
  against unreasonable risk of injury to health or the  
  environment.  Moreover, the character of the information,  
  health and safety data, may help in the registration of a  
  competitor's independently developed product, but does  
  not help in the design of the product itself.  In SB  
  1146, however, the character of the information being  
  disclosed are the interface and performance  
  specifications needed to build a competing product, and  
  the disclosures could be required in the public interest,  
  which could be interpreted to be lesser  standard than  
  protecting against unreasonable risks of injury.   
  Further, SB 1146 would require immediate disclosure, and  
  thus fails to provide an exclusive 10-year use period, an  
  important economic benefit under FIFRA.    

  Opponents thus assert that SB 1146 would destroy its  
  trade secret rights and unfairly aid its aftermarket  
  competitors.  Also citing Monsanto, "[w]ith respect to a  
  trade secret, the right to exclude others is central to  
  the very definition of the property interest.  Once the  
  data that constitute a trade secret is disclosed to  
  others, or others are allowed to use those data, the  
  holder of the trade secret has lost his property interest  
  in the data?. The economic value of that property right  
  lies in the competitive advantage over others that  
  Monsanto enjoys by virtue of its exclusive access to the  
  data, and disclosure or use by others of the data would  
  destroy that competitive edge."  Id. at 1013.    

  Opponents also point to  Phillip Morris, Inc. v.  
  Harshbarger, 159 F.3d 670 (1st Cir. 1998), a recent case  
  interpreting Monsanto to distinguish between  voluntary  
  exchanges of information, which do not constitute a  
  taking, and the forced disclosure of information under  
  legal compulsion, which does constitute a taking.  In  
  that case, Phillip Morris challenged Massachusetts'  
  ingredient-reporting statute which required  
  brand-by-brand reporting of tobacco additives in  
  descending order of volume and permitted public  
  disclosure of the ingredient information.  Any reported  
                                                             




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  information which could reduce risks to public health was  
  deemed to be a public record if the disclosure did not  
  constitute an uncompensated taking as determined by the  
  state attorney general.  Phillip Morris contended that  
  the descending order reporting requirement violated its  
  trade secrets, would make it easier for competitors to  
  reverse-engineer its products, and would constitute a  
  taking of its property.  The Commonwealth of  
  Massachusetts defended, saying that Phillp Morris could  
  not have a reasonable, investment-backed expectation of  
  secrecy  under Monsanto, and that its regulatory measure  
  is grounded in the state's police powers over matters of  
  public health.

  The First Circuit Court of Appeals rejected  
  Massachusetts' claims, and read Monsanto to require a  
  voluntary exchange of information for a loss of the  
  manufacturer's reasonable investment-backed expectation  
  of secrecy.  "Under the post-1978 FIFRA scheme,  
  submitters of environmental, health, and safety data  
  received significant benefits in return for the  
  disclosure of their data, including rights of exclusive  
  use ? and rights to compensation from later applicants?.   
  Since this exchange afforded tangible compensation to  
  pesticide manufacturers, the post-1978 version of FIFRA  
  did not work as an uncompensated taking?.  Section 307B  
  effects no comparable bargain."

  In reaching its decision that Section 307B violates the  
  takings clause, the court specifically rejected the claim  
  that the voluntary exchange consists of permitting  
  tobacco companies to continue doing business in the state  
  in return for compliance.  Citing SB 1146's parallels of  
  forced disclosure upon penalty of loss of certification  
  rights, the difference between the character of  
  information being disclosed, and the significant lower  
  level of benefits conferred "in exchange" for the forced  
  disclosure, opponents argue that the analogy to Monsanto  
  fails.                

  The sponsors claim that Harshbarger is questionable  
  authority and would likely be overturned in the future.   
  However, to date, the authority has not been questioned.   
  The sponsors also say that Harshbarger is inapposite  
  because SB 1146 would provide regulatory compensation for  
                                                             




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  the use of trade secrets, unlike the Massachusetts  
  statute.      

5.  The "Service Information Rule":  Expansion of information  
  for repairs 
   
  When passing the Clean Air Act, Congress also sought to  
  "facilitate the ability of repair facilities, including  
  independent repair facilities, to properly diagnose  
  emission component malfunctions. (S.Rep. No. 101-228, at  
  97, reprinted in 1990 U.S.C.C.A.N. at 3482.) To assure  
  that all vehicle manufacturers use OBDs that can be  
  readily accessed and interpreted, Congress specifically  
  directed EPA to adopt regulations to require  
  manufacturers "to provide promptly to any person engaged  
  in the repairing or servicing of motor vehicles or motor  
  vehicle engines ? with any and all information needed to  
  make use of the emission control diagnostic system ? and  
  such other information including instructions for making  
  emissions- related diagnosis and repair."  (CAA Sec.  
  202(m)(5).)  The rule exempts trade secrets, but requires  
  its disclosure if that information is provided directly  
  or indirectly by the car maker to its franchised dealers  
  or other persons engaged in the service or repair of  
  motor vehicle engines.  

  In 1995, EPA promulgated the Service Information Rule  
  ("SIR") to implement CAA Sec. 202(m)(5), which generally  
  requires manufacturers to make available any and all  
  information needed to make use of the OBD system and such  
  other information, including instructions for making  
  emissions-related repairs, excluding trade secrets.   The  
  EPA rule also established that auto makers can charge a  
  "fair and reasonable" price for the mandated service  
  information.  

  Pointing to SIR, opponents reject the claim that the OBD  
  systems are used to lock out independent repair and  
  service facilities from competition.  Diagnostic tools as  
  well as service information and OEM parts are available.   


  Proponents argue, however, that some manufacturers have  
  been more cooperative than others.  Some manufacturers  
  require the purchase of diagnostic scan tools costing  
                                                             




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  tens of thousands of dollars in order to make repairs on  
  their line of vehicles.  This practice is inconsistent  
  with Congressional intent and should be corrected, they  
  argue.  

  Thus, in addition to the controversial (a)(4) provision  
  requiring the disclosure of information relating to the  
  operation of OBD systems, SB 1146 would require CARB to  
  expand the requirements of the Service Information Rule  
  to expand the scope of information and tools required to  
  be furnished to service and repair facilities.  Most of  
  these provisions, such as (a)(1) - requiring  Internet  
  posting of the full contents of technical service  
  bulletins and  manuals, (a)(2) - making specific  
  diagnostic tools available at a non-discriminatory price,  
  and (a)(3) - requiring auto makers who use reprogrammable  
  computer chips in their vehicles to provide aftermarket  
  equipment and tool companies with information that will  
  allow those companies to build aftermarket tools with the  
  same reprogramming capability as is provided to the  
  franchise dealers, seem reasonable.  In fact, CARB has  
  expressed concern to US EPA about the availability of  
  affordable tools and service information to independent  
  repair facilities.  (Letter of October 8, 1998 to US  
  EPA.)  In response, the US EPA has replied that it would  
  likely amend the Service Information Rule next year.  In  
  this context, SB 1146 appears consistent with the intent  
  of Congress to "facilitate the ability of repair  
  facilities, including independent repair facilities, to  
  properly diagnose emission component malfunctions."   
  (However, expansion of the SIR to apply to aftermarket  
  parts manufacturers may raise preemption questions.  See  
  Comment 8, below.)

  As drafted, the bill is silent on whether a manufacturer  
  could charge a "fair and reasonable" fee for the mandated  
  information, as it could under the federal Service  
  Information Rule.  While proposed (a)(2) would allow  
  manufacturers to charge a non-discriminatory price for  
  furnishing specific diagnostic tools, the rest of the  
  provision is silent.     

  SHOULD THE BILL BE CLARIFIED AS TO WHETHER AUTO MAKERS  
  COULD CHARGE A FAIR AND REASONABLE FEE FOR THE MANDATED  
  INFORMATION?   
                                                             




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  Some auto manufacturers have indicated that they might be  
  able to accept these parts of SB 1146 to expand the  
  provision of service information.  Other auto makers  
  would accept expansion, subject to some clarifying and   
  narrowing amendments, but object to any inclusion of the  
  (a)(6) requirement for disclosing "lock-out" technology.   
  Opponents say that technology has nothing to do with the  
  operation of OBD II systems and its disclosure would  
  compromise anti-theft systems in late model vehicles.  

6.  Multiple responsibilities for CARB:  regulations,  
  adjudicatory hearings and possible appeals, promulgation  
  of licensing arrangements, and collection of licensing  
  fee - some implementation questions

   SB 1146 would require CARB to undertake a multitude of  
  responsibilities. 
  First, CARB would promulgate regulations to require the  
  disclosure of the information specified in Section  
  43105.5(a)(1) through (a)(7).  Second, and presumably in  
  response to an information  request by a parts maker,  
  auto makers will either provide the information or file a  
  petition with CARB seeking to exempt it from disclosure  
  as a trade secret or proprietary information.  Third ,  
  CARB will then determine if the information is a trade  
  secret or proprietary information.  If it is protected  
  information, CARB may not require its disclosure unless  
  it makes the requisite finding of public interest or need  
  to mitigate anticompetitive effects.  Fourth, if CARB  
  decides to require the disclosure of trade secret  
  information, CARB would provide for the dissemination of  
  trade secret information and collection of fair and  
  reasonable licensing fees through licensing agreements.   
  To protect trade secrets, the CARB could impose  
  reasonable business conditions as a condition of  
  disclosure and impose punitive sanctions for the improper  
  release of proprietary information to competitors of the  
  vehicle manufacturer.  These provisions, contend the  
  sponsor, would strike the balance between protecting  
  trade secrets and the public's interest in ensuring  
  consumer choices in the aftermarket parts market.    

  The potential costs to CARB of these activities is not  
  known.  
                                                             




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  a)   Implementation concerns

        Both the CARB determination on the trade secret  
     issue and its finding to warrant disclosure of the  
     trade secret would be board rulings, and would  
     presumably be formal adjudications as the decision  
     would affect property rights significantly.   
     Constitutional due process guarantees imposing  
     procedural constraints on a governmental decision that  
     may deprive a person of a property interest within the  
     meaning of the due process clause of the fifth and  
     fourteenth amendments.  Mathews v. Eldridge, 424 US  
     319 (1976).  However, the due process clause  
     guarantees no particular form or procedure; the  
     process appropriate for a particular case is dictated  
     by the circumstances.  Mitchell v. W. T. Grant 416 US  
     600 (1974).  The hearing required by due process need  
     not be an evidentiary one; and only the most serious  
     deprivations require a full evidentiary hearing.   
     (See, e.g., Goldberg v. Kelly 397 US 254 (1970),  
     (welfare termination.)  

        SB 1146 is silent on this point.  By omission, the  
     intent of the sponsor is to provide the form of  
     hearing required by law or the Constitution.      
     Government Code Section 11410.10 provides that the  
     Administrative Procedures Act ("APA") applies to a  
     decision by an agency if, under the federal or state  
     Constitution, an evidentiary hearing for determination  
     of facts is required for formulation and issuance of  
     the decision. 

        SHOULD THE BILL, TO REMOVE A POINT OF LITIGATION,  
     SPECIFY THAT THE APA APPLIES TO TRADE SECRET AND  
     DISCLOSURE DECISIONS?   

     Similarly, the bill is silent on the standards of  
     review upon appeal of an administrative ruling.   
     Section 11523 of the APA provides that judicial review  
     may be had by filing a writ of mandate, but does not  
     specify the standard of review.  Code of Civil  
     Procedure Section 1094.5, applicable to review of  
     state agency decisions, provides for varying levels of  
     review - from substantial deference to the agency's  
                                                             




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     fact determinations to independent review and judgment  
     of the evidence.  

     SHOULD, TO REMOVE A POINT IN LITIGATION, THE BILL  
     SPECIFY THE STANDARD OF REVIEW IN CASES OF APPEAL?   

   b)    Opposition opposed to forced licensing
    
     Opponents assert SB 1146 amounts to a forced licensing  
     regime, in violation of the intellectual property  
     holder's federal Copyright and Patent law protections.  


     To address this argument, SB 1146 was amended to  
     provide that its provisions are not intended to  
     authorize infringement of intellectual property rights  
     embodied in U.S. patents, trademarks or copyrights "in  
     so far as these rights are exercised consistently with  
     other federal law."  

     However, that provision does not unconditionally  
     protect patent and copyright laws.  In fact, it  
     recognizes that the exercise of patent and copyright  
     rights are not free of public benefit considerations  
     and do not enable a copyright owner to obtain a  
     defacto monopoly over its market.  (Sega Enterprises  
     Ltd. v. Accolade, Inc., 977 F.2d 1510 (9th Cir.  
     1992).) 

     Opponents also contend that mandatory licensing is  
     premature as an antitrust remedy in the absence of a  
     showing of an antitrust violation.  Even if legal, the  
     administrative burdens and challenges would be so  
     significant that opponents say the system would be  
     "wildly impractical to administer."  

     Finally, on the issue of licensing, opponents contend  
     that just compensation is constitutionally required,  
     and that the substitute administrative licensing  
     scheme would not pass constitutional muster.

        These issues will also, doubtlessly, be litigated  
     in the courts.    

7.  Should the car maker be subject to a $25,000 per day fine  
                                                             




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  and potentially lose the ability to certify new cars and  
  engines for failing to correct a violation?      
  
   If the executive officer of CARB obtains credible  
  evidence of an auto maker's   failure to comply with the  
  proposed disclosure or operation requirements, the board  
  would send a notice to the car maker warning of the  
  non-compliance.  If the violation is not corrected within  
  30 days, the bill would require the board to immediately  
  fine the auto manufacturer $25,000 per day per violation  
  until the violation is corrected.  If the violation is  
  not corrected after another 90 days, the bill would  
  require the board to halt the certification process for  
  any motor vehicles or engines submitted to the state  
  board for approval which has not yet been certified.  The  
  bill would permit the manufacturer to request a hearing  
  prior to imposition of the financial and certification  
  penalties. 

  This proposal may raise proportionality concerns as a  
  single uncorrected violation would adversely affect the  
  auto maker's ability to bring in new lines and new  
  engines.   Opponents contend that a certification penalty  
  is too severe and excessive.  They contend that a fine  
  and injunctive relief would provide sufficient relief.

8.  Opponents contend that the bill violates the Contracts  
  Clause and Commerce Clause and may be preempted 
  
  The auto manufacturers contend that many of their  
  computer programs are actually the intellectual property  
  of another company, that the auto maker is simply using  
  the product under license and a confidentiality  
  agreement.  Thus, opponents argue, SB 1146's compelled  
  disclosure of trade secret and proprietary information  
  would require the manufacturer to violate the  
  confidentiality clauses in their contracts or else face  
  financial and certification sanctions for a failure to  
  disclose.  

  The auto makers also contend that SB 1146 would violate  
  the Commerce Clause of the US Constitution.  Opponents  
  point out that because of the fungibility of the  
  information required to be disclosed, information  
  revealed in California under SB 1146 would be available  
                                                             




SB 1146 (Burton) 
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  for use elsewhere.  Thus, disclosure in California would  
  operationally destroy trade secret and licensing rights  
  recognized under the law of other states.  Citing Partee  
  v. San Diego Chargers Football Co., 34 Cal.3d 378 (1983)  
  and NCAA v. Miller 10 F.3d 633, opponents contend that  
  "where States have attempted to regulate interstate  
  enterprises in a manner that would effectively impose one  
  State's laws throughout the nation, both the California  
  and the federal courts have had little trouble finding  
  Commerce Clause violations."
      
  Finally, they argue that expansion of the Service  
  Information Rule to provide information to aftermarket  
  parts manufacturers would be preempted as being contrary  
  to Congressional intent.  "Congress sought to balance the  
  need of all mechanics for information from the devices,  
  thereby preserving competition with service and repair  
  shops unaffiliated with manufacturers, with the right of  
  those manufacturers to protect their trade secrets,  
  promoting further innovation in OBD technology."  MEMA,  
  supra, at 465.

9.  Proposed findings
   
   SB 1146 would make the following proposed legislative  
  findings and declarations:

   (a) There are over 26 million registered motor vehicles  
     in California.  These vehicles are heavily relied upon  
     by California residents to conduct their everyday  
     activities.  
   (b) The use of these motor vehicles result in hundreds  
     of tons of pollutants being emitted into California's  
     air every day, significantly affecting air quality and  
     public health and safety.  To prevent unnecessary  
     pollution, it is in the best interest of this state to  
     ensure that the ability of California motorists to  
     obtain service, repair or replacement of faulty  
     emissions-related components of their motor vehicle  
     are not limited by the arbitrary withholding of  
     service, repair, or parts information by vehicle  
     manufacturers.
   (c)  Recent emissions standards adopted and implemented  
     by the State Air Resources Board for motor vehicles  
     manufactured after 1993 have resulted in the  
                                                             




SB 1146 (Burton) 
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     development by vehicle manufacturers of "onboard  
     diagnostic computers," that interface with the many  
     component parts of a vehicle's emissions control  
     system. Essential service, repair or parts information  
     and tools for interfacing with a vehicle's onboard  
     diagnostic computer system are not readily available  
     to independent automotive repair technicians and  
     facilities.  Accordingly, consumers may be restricted  
     to having the service and repair of faulty  
     emissions-related components of a motor vehicle  
     performed only by franchised dealerships, and  
     consumers may also be forced to purchase replacement  
     parts manufactured solely by or on behalf of the  
     vehicle manufacturer.  This restriction of consumer  
     choice and options is contrary to the history of  
     automotive repair, which saw the advent of independent  
     repair technicians and facilities and of independent  
     aftermarket parts manufacturers as healthy market  
     competitors to vehicle manufacturers and their  
     dealerships.            
   (d) The arbitrary withholding of essential service,  
     repair or parts information or tools by vehicle  
     manufacturers from independent automotive repair  
     technicians and independent aftermarket parts  
     manufacturers may result in improper and needlessly  
     costly repairs which could also endanger the public  
     and result in anticompetitive effects harmful to the  
     best interests of the state. 
        
  Opponents object to the findings, contending that they  
  are erroneous and prejudicial.  For example, opponents  
  assert that there is no evidence that "essential service,  
  repair or parts information and tools for interfacing  
  with a vehicle's onboard diagnostic computer system are  
  not readily available to independent automotive repair  
  technicians and facilities."  In fact, those tools and  
  information are currently available under the Service  
  Information Rule.     

10.  The law of antitrust and anticompetitive effects

   Section 2 of the Sherman Anti-Trust Act provides:  "Every  
  person who shall monopolize or attempt to monopolize ?  
  any part of the trade or commerce among the several  
  States ? shall be deemed guilty of a felony."  
                                                             




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  In order to establish an attempted monopolization claim,  
  "a plaintiff must prove (1) that the defendant engaged in  
  predatory or anticompetitive conduct with (2) specific  
  intent to monopolize and (3) a dangerous probability of  
  achieving monopoly power."  Spectrum Sports, Inc.  
  v.McQuillan,  113 S. Ct. 884 (1993).  

  Under antitrust law, a 60 to 65 percent market share  
  establishes a prima facie case of market power and  
  creates a genuine issue of dangerous probability of  
  monopolization.  (Intergraph Corp. v. Intel Corp. 3 F.  
  Supp. 2d 1255, 1275 (1998); See also United States v.  
  Microsoft Corp., 980 F.Supp. 537 (1997) - approximately  
  80 percent market share in PC operating system software  
  constitute monopoly power.) 

  If rivals are alleged to have conspired to monopolize,  
  one court recognized that the plaintiff could aggregate  
  the market shares of the rivals.  Rebel Oil v. Atlantic  
  Richfield Co., 51 F.3d 1421,1437 (9th Cir. 1995). 

  The use of monopoly power, however lawfully acquired, to  
  foreclose competition, to gain competitive advantage, or  
  to destroy a competitor, is unlawful.  (U.S. v. Griffith,  
  334 U.S. 100 (1948).)

  Recent cases, strongly cited by the sponsor, have also  
  suggested a new concept, known as "monopoly leveraging."   
  In Berkey Photo Inc. v. Eastman Kodak Co., 603 F.2d 263,  
  276 (2d Cir. 1979), cert. denied, 444 U.S. 1093, that  
  court noted:  "The use of monopoly power attained in one  
  market to gain a competitive advantage in another is a  
  violation of Section 2, even if there has not been an  
  attempt to monopolize the second market."  Even conduct  
  by a monopolist that is otherwise lawful may violate the  
  antitrust laws where it has anticompetitive effects.   
  (Image Technical Services, Inc. v. Eastman Kodak Co. 125  
  F.3d 1195, 1207 (9th Cir. 1997).)  However, not all  
  circuits or districts are in accord.  (See, e.g., Fineman  
  v. Armstrong World Indus. Inc. 980 F.2d 181, 206 (3rd  
  Cir. 1992), holding that "in order to prevail upon a  
  theory of monopoly leveraging, a plaintiff must prove  
  threatened or actual monopoly in the leveraged market.")
       
                                                             




SB 1146 (Burton) 
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  Finally, a refusal to deal "may be unlawful because a  
  monopolist's control of an essential facility (sometimes  
  called a 'bottleneck') can extend monopoly power from one  
  stage of production to another, and from one market to  
  another.  (Intergraph Corp. v. Intel Corp., supra, citing  
  MCI Communications Co. v. ATT, 708 F.2d 1081, 1132 (7th  
  Cir. 1983.)  The antitrust laws impose on firms  
  controlling an essential facility the obligation to make  
  the facility available on non-discriminatory terms.   
  (Id.)

  In the abstract and under circumstances not evidenced  
  thus far, proponents arguably may be able to show that an  
  auto maker's conduct in controlling the OBD II  
  information constitutes a Sherman antitrust violation  
  where the OBD II system is found to be an essential  
  facility.  "Courts have held that antitrust laws protect  
  customers and purchasers in cases when a monopolist  
  refuses to deal in order to control a downstream market."  
  Intergraph Corp. v. Intel Corp., supra, at 1277, citation  
  omitted. 
  
 Support: Alliance of State Automotive Aftermarket  
       Associations; Automotive Engine Rebuilders Ass'n.;  
       Automotive Parts and Accessories Ass'n.; Automotive  
       Parts Rebuilders Ass'n.; Automotive Repair  
       Coalition; Automotive Service Councils of  
       California; Automotive Service Industry Ass'n.;  
       Automotive Trade Organization of California;  
       Automotive Warehouse Distributors Association;  
       California Automotive Teachers; California Service  
       Station and Automotive Repair Ass'n.; California Tow  
       Truck Ass'n.; Coalition for Automotive Repair  
       Equity; Consumers for Auto Safety and Reliability;  
       California State Automobile Ass'n.; Automobile Club  
       of Southern California; Car Owners Standing  
       Together; Chambers of Commerce of Imperial,  
       Lancaster, and Mountain View; Small Business of  
       America; Independent Automobile Dealers Ass'n.;  
       Motor Equipment Manufacturers Ass'n.

Opposition: Alliance of Automobile Manufacturers; Ass'n of  
         International Automobile Manufacturers; California  
         Motor Car Dealers Ass'n.; California Manufacturers  
         Ass'n.; Delphi Automotive Systems Corp.; General  
                                                             




SB 1146 (Burton) 
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         Motors Corp.; Ford Motor Co.; Daimler-Chrysler;  
         Honda North America, Inc.; Toyota Motor Sales,  
         USA, Inc.; Nissan North America; NUMMI Motors  

                           HISTORY
  
Source: Automotive Aftermarket Legislation Coalition;  
     California Consumer 
                Choice Coalition 

Related Pending Legislation: None Known

Prior Legislation: None Known

Prior vote:  Senate Transportation:  8 - 1  

                       **************