DENISE CHAVEZ, Plaintiff-Appellee, v. ARTE PUBLICO PRESS, et
al., Defendants-Appellants
No. 93-2881
UNITED STATES COURT OF APPEALS FOR THE FIFTH CIRCUIT
204 F.3d 601; 2000 U.S. App. LEXIS 2490; 53 U.S.P.Q.2D
(BNA) 2009; Copy. L. Rep. (CCH) P28,040
February 18, 2000, Decided
EDITH H. JONES, Circuit Judge:
This Copyright/Lanham Act case has once again been remanded, this time by
this Court sitting en banc, for reconsideration in light of the Supreme Court's
decisions in Florida Prepaid Postsecondary Educ. Expense Bd. v. College Savings
Bank, 527 U.S. 627, 119 S. Ct. 2199, 144 L. Ed. 2d 575 (1999) and College
Savings Bank v. Florida Prepaid Postsecondary Educ. Expense Bd., 527 U.S. 666,
119 S. Ct. 2219, 144 L. Ed. 2d 605 (1999). The issue is whether Congress
properly exercised its authority to subject states to suit in federal court for
violation of those statutes. See 15 U.S.C. § 1122; 17 U.S.C. §§ 501, 511.
Plaintiff Chavez asserts that the University of Houston infringed her copyright
by continuing to publish her book without her consent and violated the Lanham
Act by naming her, also without her permission, as the selector of plays in
another book it published. The University of Houston contends that because [**4]
it enjoys immunity from unconsented-to suit in federal court under the Eleventh
Amendment, the case must be dismissed. Once again, we agree with the University.
n1
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n1 A recent summary calendar decision of this court held, while this case was
being briefed and considered on remand, that a state's sovereign immunity could
not be abrogated by the enactment of the Copyright Remedy Clarification Act, a
statute at issue here. Rodriguez v. Texas Comm'n on the Arts, 199 F.3d 279 (5th
Cir. 2000). We are bound by that decision, but in light of our post-remand
briefing requests to the parties in this case, and their and the amici's
voluminous responses, a complete response is appropriate to the issues
presented.
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Abrogation of a state's Eleventh Amendment immunity turns on an express
statement of intent by Congress and a constitutionally valid exercise of power.
See Seminole Tribe of Fla. v. Florida, 517 U.S. 44, 55, 116 S. Ct. 1114, 1123,
134 L. Ed. 2d 252 (1996). Congress amended both [**5] the Lanham Act and the
Copyright Act and explicitly required states to submit to suit in federal court
for violation of their provisions; n2 thus, the express statement requirement is
fulfilled. The remaining question, to be considered in the light of College
Savings, Florida Prepaid, and Kimel v. Fla. Bd. of Regents, 528 U.S. 62, 120 S.
Ct. 631, 145 L. Ed. 2d 522, 2000 WL 14165 (2000), is whether Congress had
authority to abrogate state sovereign immunity in the Acts.
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n2 See Trademark Remedy Clarification Act, Pub.L. No. 102-542, 106 Stat. 3567
(1992) (codified at 15 U.S.C. §§ 1122, 1125(a)); Copyright Remedy Clarification
Act, Pub.L.No. 101-553, 104 Stat. 2749 (1990) (codified at 17 U.S.C. §§ 501(a),
511).
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The first opinion in this case followed the Parden theory that states can
impliedly waive their sovereign immunity and, [*604] on that basis, held that
the University could be sued in federal court for violating the two statutes.
See Chavez v. Arte Publico Press, 59 F.3d 539, 547 (5th Cir. 1995) [**6]
[hereinafter Chavez I]; see Parden v. Terminal Ry. Of Ala. State Docks Dep't,
377 U.S. 184, 84 S. Ct. 1207, 12 L. Ed. 2d 233 (1964).
After the Supreme Court remanded for reconsideration in light of Seminole, we
concluded that Parden's implied waiver theory was no longer viable. See Chavez
v. Arte Publico Press, 157 F.3d 282, 287 (5th Cir. 1998) [hereinafter Chavez
II]. Taking Seminole in conjunction with City of Boerne v. Flores, 521 U.S. 507,
117 S. Ct. 2157, 138 L. Ed. 2d 624, we held that the Copyright Remedy
Clarification Act (hereinafter CRCA) and the Trademark Remedy Clarification Act
(hereinafter TRCA) were invalid exercises of Article I legislative power.
Further, upholding the statutes as valid exercises of legislative power pursuant
to section 5 of the Fourteenth Amendment would be an impermissible end-run
around Seminole. Id. Chavez II was vacated by the court's vote for en banc
reconsideration, but the case was remanded to this panel after College Savings
and Florida Prepaid were decided.
Chavez and the amici who have filed supplemental post- remand briefs contend
that the [**7] CRCA validly enforces the due process clause of the Fourteenth
Amendment. And for the first time in this case, they defend the CRCA as a means
of enforcing the privileges or immunities clause of the Fourteenth Amendment. n3
While Chavez's arguments are interesting, we again find them unpersuasive. n4
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n3 Chavez has conceded that, in the light of College Savings, the TRCA is not
a valid exercise of legislative authority, and she no longer seeks to defend it.
n4 Senator Leahy has recently introduced a bill, entitled the "Intellectual
Property Protection Restoration of 1999," to restore federal remedies for
violations of intellectual property rights by States. Senator Leahy describes
that legislation as providing a damages remedy to redress constitutional
violations and ensuring the availability of the full range of prospective
equitable relief. See 145 Cong. Rec. S13552-04, S13558 (daily ed. Oct. 29, 1999)
(statement of Sen. Leahy).
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A) Section 5 of the Fourteenth Amendment
Chavez and amici justify [**8] the CRCA's abrogation of state Eleventh
Amendment immunity under section 5 of the Fourteenth Amendment, because Congress
acted to prevent states from depriving copyright holders of their property
without due process of law. They contend that the legislative history
demonstrates that the waiver effected by the CRCA is proportional to its
remedial object. n5
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n5 As Chavez II predicted, College Savings expressly overruled Parden and its
implied waiver theory. See College Savings, 119 S. Ct. at 2228. That theory is
no longer available to support an Article I abrogation of Eleventh Amendment
Immunity.
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The University of Houston preliminarily counters that since Congress relied
only on the copyright clause of Article I in enacting the CRCA, we may not
consider another ground of constitutionality -- the Fourteenth Amendment -- that
Congress did not invoke. The most recent Supreme Court authority supports this
position. In a footnote in Florida Prepaid, the Court declined to consider the
[**9] Just Compensation clause as a basis for the PRCA, stating:
There is no suggestion in the language of the statute itself, or in
the House or Senate Reports of the bill which became the statute, that
Congress had in mind the Just Compensation Clause of the Fifth
Amendment. Since Congress was so explicit about invoking its authority
under Article I and its authority to prevent a State from depriving a
person of property without due process of law under the Fourteenth
Amendment, we think this omission precludes consideration of the Just
Compensation Clause as a basis for the Patent Remedy Act.
[*605]
Florida Prepaid, 119 S. Ct. at 2208 n.7. Earlier Supreme Court jurisprudence
was unsettled on this point. Proceeding chronologically, the Court first held
that the "constitutionality of action taken by Congress does not depend on
recitals of the power which it undertakes to exercise." Woods v. Cloyd W. Miller
Co., 333 U.S. 138, 144, 68 S. Ct. 421, 424, 92 L. Ed. 596 (1948). In its next
brush with the issue, the Court held that "because [legislation to enforce the
Fourteenth Amendment] imposes congressional power on a state involuntarily, and
because [**10] it often intrudes on traditional state authority, we should not
quickly attribute to Congress an unstated intent to act under its authority to
enforce the Fourteenth Amendment." Pennhurst State School v. Halderman, 451 U.S.
1, 15, 101 S. Ct. 1531, 1539, 67 L. Ed. 2d 694 (1981). Following Pennhurst,
however, the Court appeared to retrench when it stated it must "be able to
discern some legislative purpose or factual predicate that supports the exercise
of [Fourteenth Amendment] power. That does not mean, however, that Congress need
anywhere recite the words 'section 5' or 'Fourteenth Amendment' or 'equal
protection.'" EEOC v. Wyoming, 460 U.S. 226, 243 n.18, 103 S. Ct. 1054, 1064
n.18, 75 L. Ed. 2d 18 (1983). Even if Florida Prepaid, a majority opinion, does
not rule out Chavez's reliance on the implicit authority of the Fourteenth
Amendment, we hold on the merits that the CRCA did not properly enforce the due
process clause.
Congress can abrogate the states' sovereign immunity when acting to enforce
constitutional rights pursuant to section 5 of the Fourteenth Amendment. See
Seminole, 116 S. Ct. at 1128 (citing Fitzpatrick v. Bitzer, 427 U.S. 445, 96 S.
Ct. 2666, 49 L. Ed. 2d 614 (1976)). [**11] City of Boerne, however, states that
when Congress legislates pursuant to section 5, "there must be a congruence and
proportionality between the injury to be prevented or remedied and the means
adopted to that end." City of Boerne, 117 S. Ct. at 2164. Florida Prepaid
applied the principles of City of Boerne to the PRCA, a statute analogous to the
CRCA in the patent field. The analytical framework that Florida Prepaid sets
forth requires examination of three aspects of the legislation: 1) the nature of
the injury to be remedied; 2) Congress's consideration of the adequacy of state
remedies to redress the injury; and 3) the coverage of the legislation. This
framework was recently reconfirmed by the Court in Kimel, supra.
The first consideration is the nature of the injury to be remedied and
whether the state's conduct evinced a pattern of constitutional violations. See
Florida Prepaid, 119 S. Ct. at 2207. The underlying conduct at issue here is
state infringement of copyrights, rather than patents, and the "constitutional
injury" consists of possibly unremedied, or uncompensated, violation of
copyrights by states. [**12] See H.R. Rep. No. 101-282, pt.1, at 3 (1989),
reprinted in 1990 U.S.C.C.A.N. 3949, 3951 [hereinafter H.R. Rep.]. Such
infringements, it is contended, would "take" the copyright owners' property
without due process of law. n6
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n6 In Chavez II, we said that whether copyrights were a form of property
protectable against the states raised troubling issues. The Supreme Court held
in Florida Prepaid that patents are considered property within the meaning of
the due process clause. See Florida Prepaid, 119 S. Ct. at 2208. Since patent
and copyright are of a similar nature, and patent is a form of property
protectable against the states, copyright would seem to be so too.
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The Supreme Court concluded in Florida Prepaid that "Congress identified no
pattern of patent infringement by the States, let alone a pattern of
constitutional violations." Florida Prepaid, 119 S. Ct. at 2207. Although the
legislative history for the CRCA documents a few more instances of copyright
[**13] infringement than the PRCA legislative history did of patent violations,
the CRCA's history exhibits similar deficiencies. For example, testimony before
the House Subcommittee in favor of the CRCA acknowledged that "the States
[*606] are not going to get involved in wholesale violation of the copyright
laws." Copyright Remedy Clarification Act and Copyright Office Report on
Copyright Liability of States: Hearings Before the Subcomm. on Courts,
Intellectual Property, and the Administration of Justice of the House Comm. on
the Judiciary, 101st Cong. 53 (1989) [hereinafter House Hearings] (statement of
Ralph Oman, Register of Copyrights, Library of Congress). n7 In addition, the
bill's sponsor stated that "thus far there have not been any significant number
of wholesale takings of copyright rights by States or State entities." Id., at
48 (statement of Rep. Kastenmeier).
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n7 Mr. Oman also stated that "[the States] are all respectful of the
copyright laws." House Hearings, at 8.
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At the request of Congress, the Copyright [**14] Office reported on the
relation between the states' copyright liability and the Eleventh Amendment; in
that report, no more than seven incidents of State copyright infringement
enabled by the Eleventh Amendment were documented. Register of Copyrights,
Copyright Liability of States and the Eleventh Amendment 5-9 (1988) [hereinafter
Copyright Office Report]. Nor did the Senate hear evidence of a pattern of
unremedied copyright infringement by the States. Rather than expose a current
epidemic of unconstitutional deprivations, the testimony before Congress worried
principally about the potential for future abuse, see House Hearings, at 7
(statement of Ralph Oman), and the concerns of copyright owners about that
potential, see Copyright Office Report, at 5-17. Compare Florida Prepaid, 119 S.
Ct. at 2207 ("At most, Congress heard testimony that patent infringement by
States might increase in the future.").
Second, we consider whether Congress studied the existence and adequacy of
state remedies for injured copyright owners when a state infringes their
copyrights. See Florida Prepaid, 119 S. Ct. at 2208. The legislative histories
of the PRCA and [**15] CRCA are again parallel. In each case, Congress barely
considered the availability of state remedies for infringement. See Florida
Prepaid, 119 S. Ct. at 2209 (finding no evidence that Congress considered
whether patent infringement remedies were available in the states). With regard
to the CRCA, one witness testified that his company's attorneys told him that
state and local courts were unavailable because only federal courts can hear
copyright infringement cases. See House Hearings, at 51 (statement of James
Healy, Vice President of Enterprise Media). In addition, the Copyright Office
provided a survey of state waivers of Eleventh Amendment immunity as an appendix
to its report. See Congressional Research Service, Waiver of Eleventh Amendment
Immunity from Suit: State Survey Relating to Copyright Infringement Claims
(1988) (Appendix C to the Copyright Office Report). These are the only two
allusions to state remedies in the legislative history. While Congress referred
briefly to the Copyright Office's report in the House Report on the bill,
Appendix C was mentioned neither in the House Report nor in any of the
congressional hearings. Furthermore, as pointed [**16] out in a statement
submitted to Congress, the survey failed to include information on state
remedies for the unlawful taking of private property by the state government.
See The Copyright Remedy Clarification Act: Hearing Before the Subcomm. on
Patents, Copyrights and Trademarks of the Senate Comm. on the Judiciary, 101st
Cong. 123 (1989) [hereinafter Senate Hearing] (statement on behalf of the
Educators' Ad Hoc Committee on Copyright Law). As noted in Chavez II, there are
other possible remedies in state courts -- breach of contract claims, for
example -- that Congress also never considered. n8
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n8 Instead of considering the adequacy of possible state remedies, Congress
focused on the adequacy of injunctive relief, stating that injunctive relief was
not adequate protection for copyright owners. See H.R. Rep, at 8.
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[*607] As if to emphasize its lack of interest in state remedies, Congress
rejected the idea of granting state courts concurrent jurisdiction over
copyright cases, an alternative solution that [**17] would have avoided any
Eleventh Amendment problems. Congress rejected this solution not because it was
an inadequate remedy, but because Congress believed concurrent jurisdiction
would undermine the uniformity of copyright law. See H.R. Rep., at 9. Although
uniformity is undoubtedly an important goal, "that is a factor which belongs to
the Article I patent-power calculus, rather than to any determination of whether
a state plea of sovereign immunity deprives a patentee of property without due
process of law." Florida Prepaid, 119 S. Ct. at 2209. The same is true here.
Finally, Florida Prepaid examined the breadth of coverage of the legislation.
See id. at 2210. In enacting legislation pursuant to section 5 of the Fourteenth
Amendment, Congress should ensure that there is "a congruence and
proportionality between the injury to be prevented or remedied and the means
adopted to that end." City of Boerne, 521 U.S. at 520; see also id. at 533 (
"Where, however, a congressional enactment pervasively prohibits constitutional
state action in an effort to remedy or to prevent unconstitutional state action,
limitations ... tend to [**18] ensure Congress' [sic] means are proportionate
to ends legitimate under § 5."). As the Court noted in Florida Prepaid, Supreme
Court jurisprudence indicates that a deprivation, to fit the meaning of the due
process clause, must be intentional; a negligent act that causes unintended
injury is not sufficient. See Florida Prepaid, 119 S. Ct. at 2209. Copyright
infringement actions, like those for patent infringement, ordinarily require no
showing of intent to infringe. Instead, knowledge and intent are relevant in
regard to damages. See 1 Neil Boorstyn, Boorstyn on Copyright § 12.15 (2d ed.
1999) ("Although defendant's innocent intent is no defense to an infringement
action, it may affect recoverable damages"); compare Florida Prepaid, 119 S. Ct.
at 2209 ("Actions predicated on direct patent infringement ... do not require
any showing of intent to infringe; instead, knowledge and intent are considered
only with respect to damages."). In addition, Mr. Oman, the Register of
Copyrights, acknowledged that most copyright infringement by states is
unintentional, stating that "[the States] would want [immunity] only as a shield
for the State [**19] treasury from the occasional error or misunderstanding or
innocent infringement." House Hearings, at 8. In enacting the CRCA, however,
Congress did nothing "to confine the reach of the Act by limiting the remedy to
certain types of infringement, . . . or providing for suits only against States
with questionable remedies or a high incidence of infringement." Florida
Prepaid, 119 S. Ct. at 2210. Its "indiscriminate scope" cannot be reconciled
with the principle that legislation pursuant to the due process clause of the
Fourteenth Amendment must be proportionate to legitimate section 5 ends. See id.
Since the record does not indicate that Congress was responding to the kind
of massive constitutional violations that have prompted proper remedial
legislation, that it considered the adequacy of state remedies that might have
provided the required due process of law, or that it sought to limit the
coverage to arguably constitutional violations, we conclude that the CRCA is,
like the PRCA, an improper exercise of Congressional legislative power. The
Court said in Florida Prepaid that PRCA's "apparent and more basic aims were to
provide a uniform remedy for patent [**20] infringement and to place States on
the same footing as private parties under that regime. These are proper Article
I [*608] concerns, but that Article does not give Congress the power to enact
such legislation after Seminole Tribe." Florida Prepaid, 119 S. Ct. at 2211. The
same can be said about the CRCA, n9 which is doomed in the wake of Florida
Prepaid and Kimel. n10
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n9 See H.R. Rep., at 9-11 (noting that uniformity concerns militated against
granting concurrent jurisdiction to state courts and that immunity introduced a
disparity between state and private educational institutions); Senate Hearings,
at 129 (statement by Sen. DeConcini that the disparity in liability for
copyright infringement between state and private educational institutions is a
difficult situation).
n10 Our conclusion is buttressed by the fact that the Copyright Office
recommended that, if Union Gas held that Congress could not abrogate state
sovereign immunity under its Article I powers, Congress provide for concurrent
jurisdiction where states are defendants in copyright infringement damages
cases. See Copyright Office Report, at ix. Other witnesses also treated the
holding in Union Gas as a prerequisite to the passage of the CRCA. See House
Hearings, at 160 (statement by Professors Leo J. Raskind, David Shipley and
Peter Jassi).
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[**21]
B) The Privileges and Immunities Clause
Chavez also argues that the CRCA is a proper exercise of section 5 power to
enforce the privileges and immunities clause of the Fourteenth Amendment. She
argues that since copyright is a form of property and an originalist
interpretation of the privileges and immunities clause protects the right to
acquire and control property, that clause protects the right to acquire and
enforce a copyright. Chavez buttresses this argument by reference to the Supreme
Court's recent opinion that appeared to revive the long-nascent privileges and
immunities clause. Saenz v. Roe, 526 U.S. 489, 119 S. Ct. 1518, 143 L. Ed. 2d
689 (1999). She further asserts that the Slaughterhouse Cases are not to the
contrary since they hold only that the privileges and immunities clause does not
protect rights secured by state law; a copyright is a right secured by Federal
law. See Slaughter-House Cases, 83 U.S. (16 Wall.) 36, 74, 21 L. Ed. 394 (1872).
Two propositions dispose of the viability of these arguments in the present
case. First, if the Slaughterhouse Cases actually supported Chavez's position,
she could have claimed [**22] a deprivation of the privileges and immunities
clause from the outset of this litigation. Second, Chavez's attempt to piggyback
on Saenz, where the Supreme Court has provided no guidance for its "modern"
interpretation of the clause, asks more of this court than it should give.
Litigation must run its course at some point. Chavez has held ample opportunity
to develop novel theories of recovery in the last years of litigation.
CONCLUSION
For the foregoing reasons, we conclude that Chavez's action may not be
maintained in federal court against the University of Houston, Arte Publico
Press, and Nicholas Kanellos in his official capacity. The district court's
judgment is Vacated, and the case is remanded with instructions to Dismiss
insofar as these defendants are sued for money damages.
VACATED and REMANDED with Instructions to DISMISS.