Revised March 10, 2000
UNITED STATES COURT OF APPEALS
FOR THE FIFTH CIRCUIT
No. 93-2881
DENISE CHAVEZ
Plaintiff-Appellee,
v.
ARTE PUBLICO PRESS, et al.,
Defendants-Appellants
Appeal from the United States District Court for the
Southern District of Texas
February 18, 2000
Before KING, Chief Judge, JONES and EMILIO M. GARZA, Circuit Judges.
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, ___
U.S. ___, 119 S.Ct. 2199 (1999) and College Savings Bank v. Florida
Prepaid Postsecondary Educ. Expense Bd., ___ U.S. ___, 119 S.Ct.
2219 (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 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.1
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 the Lanham Act and the Copyright Act and explicitly
required states to submit to suit in federal court for violation of
their provisions;2 thus, the express statement requirement is
fulfilled. The remaining question, to be considered in the light
1
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, Case No. 98-10251 (5th Cir., Jan. 10, 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.
2
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).
2
of College Savings, Florida Prepaid, and Kimel v. Fla. Bd. of
Regents, 2000 WL 14165 (Jan. 11, 2000), is whether Congress had
authority to abrogate state sovereign immunity in the Acts.
The first opinion in this case followed the Parden theory
that states can impliedly waive their sovereign immunity and, 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) [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.
3
Chavez and the amici who have filed supplemental post-
remand briefs contend that the 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.3 While Chavez’s
arguments are interesting, we again find them unpersuasive.4
A) Section 5 of the Fourteenth Amendment
Chavez and amici justify 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.5
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
3
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.
4
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).
5
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.
4
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 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.
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 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,
5
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)). 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
6
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. 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.6
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 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
6
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.
7
acknowledged that “the States 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).7 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).
At the request of Congress, the Copyright 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
7
Mr. Oman also stated that “[the States] are all respectful of the
copyright laws.” House Hearings, at 8.
8
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 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
9
C was mentioned neither in the House Report nor in any of the
congressional hearings. Furthermore, as pointed 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.8
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
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
8
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.
10
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 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
11
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 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 infringement and
to place States on the same footing as private parties under that
12
regime. These are proper Article I 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,9 which is doomed in the wake of Florida Prepaid and
Kimel.10
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
9
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).
10
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).
13
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
(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 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.
14