Chavez v. Arte Publico Press

United States Court of Appeals,

Fifth Circuit.

No. 93-2881.

Denise CHAVEZ, Plaintiff-Appellee,

v.

ARTE PUBLICO PRESS, et al., Defendants-Appellants.

Aug. 1, 1995.

Appeal from the United States District Court for the Southern
District of Texas.

Before WISDOM, JONES and EMILIO M. GARZA, Circuit Judges.

EDITH H. JONES, Circuit Judge:

The University of Houston and one of its employees appeal the

denial of their motions to dismiss an action brought under the

Copyright and Lanham Acts. Appellants principally contend that the

Acts are unconstitutional under the Eleventh Amendment because they

purport to override state immunity and authorize suits in federal

court against the state for violation of the Acts. This would

appear to be a compelling defense, were it not for the vicissitudes

of Supreme Court interpretation of the Amendment. As the Court's

decisions now stand, the University's claim of sovereign immunity

must fail, although its employee Kanellos prevails on qualified

immunity.

BACKGROUND1

Denise Chavez, the plaintiff/appellee, is a "nationally

1
Because this is an appeal from the denial of a motion to
dismiss under Federal Rule of Civil Procedure 12(b)(6) for
failure to state claim on which relief may be granted, we take as
true the facts alleged in the Complaint.

1
renowned playwright and dramatist ... with a unique and valuable

reputation as a commentator on cultural issues regarding women and,

in particular, Hispanic women." Chavez has resided in New Mexico

at all times relevant to this lawsuit.

Arte Publico Press, the defendant/appellant, is a component

part of the University of Houston and legally indistinguishable

from the University. The University is owned and operated by the

State of Texas. Nicolas Kanellos, also a defendant/appellant, is

a University employee who at all times relevant acted on its

behalf.

In July 1984, Chavez and the University entered into a

contract for publication of her books. A year later, the

University agreed to do a first printing of The Last of the Menu

Girls, a collection of Chavez's short stories. The book was

published in 1986, and the copyright was registered in Chavez's

name as author and owner. Twice in later years, the parties agreed

on additional publishing contracts for The Last of the Menu Girls,

each of which provided for a specified number of copies to be

printed. Kanellos signed the contracts on behalf of the

University.

In late 1991 and early 1992, Chavez, dissatisfied that the

University had failed to correct errors in the earlier printings,

refused to permit the University to print any more copies than

agreed to in the 1991 contract. On or about October 2, 1992,

however, the University asserted to Chavez that the 1991 contract

did not limit the number of copies it could print and declared its

2
intention to print 5,000 more copies of the book.2

During this time period, the University also published an

anthology of plays entitled Shattering the Myth. Chavez was

identified in a University catalog as the selector of the plays.

Chavez does not dispute this statement, but she objects that her

identification as selector is a misrepresentation of sponsorship in

violation of her right to publicity.

Chavez filed this action in 1993 in federal court. Her

complaint alleges that the University and Kanellos, in both his

official and individual capacities, infringed her copyright in her

book, violated the Lanham Act in naming Chavez as the selector of

the plays without her authority, and violated her state law right

to publicity. Chavez seeks a declaratory judgment securing her

rights under the contract, as well as damages, attorneys' fees, and

an injunction against the University. Chavez invokes federal

question and supplemental jurisdiction, but not diversity

jurisdiction.

The University moved to dismiss on behalf of itself and

Kanellos for failure to state a claim, resting inter alia, on

Eleventh Amendment sovereign immunity. Kanellos also asserted his

qualified immunity. The district court denied the motions,

allowing the lawsuit to proceed. The University and Kanellos filed

a timely interlocutory appeal on these issues. Puerto Rico

2
The 1991 contract provides that the University shall have
the exclusive right publish the book for a term of at least five
years and that only the University may terminate the contract
during that term. The addendum to the contract specifies that
the number of copies to be published is 2,000 trade paperbacks.

3
Aqueduct & Sewer Auth. v. Metcalf & Eddy, Inc., --- U.S. ----, ----

, 113 S.Ct. 684, 689, 121 L.Ed.2d 605 (1993).

DISCUSSION

A State's immunity from suit in federal court has a turbulent

past, an enigmatic present, and an uncertain future. Our

commission is to ascertain the current state of the law, guided by

the historical evolution of sovereign immunity. The future of such

immunity will ultimately be resolved by the Supreme Court, perhaps

in a case pending this term. See Seminole Tribe of Florida v.

State of Florida, 11 F.3d 1016 (11th Cir.1994), cert. granted, ---

U.S. ----, 115 S.Ct. 932, 130 L.Ed.2d 878 (1995).

The highlights of sovereign immunity jurisprudence provide the

necessary context for this discussion. The Constitution did not

originally confer explicit immunity on the States against suits in

federal court. Article III, section 2 extends the federal judicial

power to controversies "between a State and Citizens of another

State." In 1793, the Supreme Court exercised this grant of power

and assumed original jurisdiction over a suit brought by a citizen

of South Carolina against the State of Georgia. Chisholm v.

Georgia, 2 Dall., 419, 1 L.Ed. 440 (1793). This decision "created

such a shock of surprise that the Eleventh Amendment was at once

proposed and adopted." Monaco v. Mississippi, 292 U.S. 313, 325,

54 S.Ct. 745, 749, 78 L.Ed. 1282 (1934).

The Eleventh Amendment provides:

"The judicial power of the United States shall not be
construed to extend to any suit in law or equity, commenced or
prosecuted against one of the United States by Citizens of
another State, or by Citizens or Subjects of any Foreign

4
 State."

That the Amendment's language overruled Chisholm was never

disputed; whether the Amendment also affirmed the existence of

immunity beyond the text, as later recognized in Hans v. Louisiana,

134 U.S. 1, 10 S.Ct. 504, 33 L.Ed. 842 (1890), has been the subject

of intense debate.

In Hans, the Supreme Court held that the scope of sovereign

immunity was not limited by the text of the Eleventh Amendment.

Rather, the Amendment embodied the broader and more fundamental

constitutional concept of state immunity from suit in federal court

even against suits brought by its own citizens. A review of the

constitutional debates concerning the scope of Article III

persuaded the Court that federal jurisdiction over suits against

unconsenting states "was not contemplated by the Constitution when

establishing the judicial power of the United States." Id. at 15,

10 S.Ct. at 507.3 Although repeatedly called into question by some

3
Thirty years later, the Court succinctly summarized its
Eleventh Amendment jurisprudence after Hans:

"That a State may not be sued without its consent is a
fundamental rule of jurisprudence having so important a
bearing upon the construction of the Constitution of
the United States that it has become established by
repeated decisions of this court that the entire
judicial power granted by the Constitution does not
embrace authority to entertain a suit brought by
private parties against a State without consent given:
not one brought by citizens of another State, or by
citizens of a foreign State, because of the Eleventh
Amendment; and not even one brought by its own
citizens, because of the fundamental rule of which the
Amendment is but an exemplification."

Ex Parte State of New York, 256 U.S. 490, 497, 41 S.Ct. 588,
589, 65 L.Ed. 1057 (1921).

5
of the Justices, Hans and its progeny remain the law. However, a

State's general immunity from suit in federal court marks only the

beginning of the inquiry.

A State is free to waive its immunity and consent explicitly

to suit in federal court. See e.g., Pennhurst State School & Hosp.

v. Halderman, 465 U.S. 89, 99, 104 S.Ct. 900, 907, 79 L.Ed.2d 67

(1984); Atascadero State Hosp. v. Scanlon, 473 U.S. 234, 238, 105

S.Ct. 3142, 3145, 87 L.Ed.2d 171 (1985). Not only may the state

expressly waive its immunity, but according to some opinions from

the Supreme Court, waiver may occur in two other instances relevant

to this case. The first theory of non-express waiver has been

designated as the "plan of the [constitutional] convention" waiver;

the second may be called "implied" or "Parden " waiver.4

The "plan of the convention" theory of state waiver of

sovereign immunity was first highlighted in Monaco v. Mississippi,

292 U.S. 313, 54 S.Ct. 745, 78 L.Ed. 1282 (1934). The Court

explained that "States of the Union, still possessing attributes of

sovereignty, shall be immune from suits, without their consent,

save where there has been a "surrender of this immunity in the plan

of the convention.' The Federalist No. 81." Id. at 322-23, 54

S.Ct. at 748.5 According to the plan of the convention theory, by

4
It has been held that in ratifying the Fourteenth
Amendment, states waived immunity from suits authorized by
Congress under section five of the Fourteenth Amendment.
Fitzpatrick v. Bitzer, 427 U.S. 445, 456, 96 S.Ct. 2666, 2671, 49
L.Ed.2d 614 (1976). Our resolution of this case does not warrant
analysis under the Fourteenth Amendment.
5
In Monaco, the Court ultimately held that because there
existed "no ground upon which it can be said that any waiver or

6
ratifying the Constitution, States necessarily surrendered certain

of their powers to the federal government. Implicit in this

surrender was a consent to suit in federal court in certain cases.

The Supreme Court has found such a waiver in two contexts: suits

by Sister States, South Dakota v. North Carolina, 192 U.S. 286,

318, 24 S.Ct. 269, 275, 48 L.Ed. 448 (1904), and suits by the

United States, United States v. Texas, 143 U.S. 621, 12 S.Ct. 488,

36 L.Ed. 285 (1892). Whether the States waived immunity from suits

by private parties by ratifying the Constitution is not so clear.

As will be discussed, the Supreme Court was confronted with this

very question in Pennsylvania v. Union Gas, 491 U.S. 1, 109 S.Ct.

2273, 105 L.Ed.2d 1 (1989).

The second form of non-express waiver has been deemed to occur

when a State participates for profit in a particular market or

industry, and Congress, acting pursuant to the powers conferred

upon it in Article I of the Constitution, has explicitly

conditioned that participation on a State's waiver of immunity from

suit. Thus, in Parden v. Terminal Ry. of Ala. State Docks Dept.,

377 U.S. 184, 84 S.Ct. 1207, 12 L.Ed.2d 233 (1964), "Congress

conditioned the right to operate a railroad in interstate commerce

upon amenability to suit in federal court as provided by the

[Federal Employers' Liability Act] ..." Id. at 192, 84 S.Ct. at

1213. See also Employees of Dept. of Public Health & Welf. v.

consent by a State of the Union has run in favor of a foreign
State," Mississippi had not waived its immunity from suit by the
foreign State of Monaco. Monaco, 292 U.S. at 330, 54 S.Ct. at
751.

7
Missouri, 411 U.S. 279, 285, 93 S.Ct. 1614, 1618, 36 L.Ed.2d 251

(1973) (in enacting the Fair Labor Standards Act, Congress did not

condition operation of a not-for-profit State hospital on waiver of

State immunity); Atascadero State Hosp. v. Scanlon, 473 U.S. 234,

247, 105 S.Ct. 3142, 3149-50, 87 L.Ed.2d 171 (1985) ("The Act ...

falls far short of manifesting a clear intent to condition

participation in the programs funded under the Act on a State's

consent to waive its constitutional immunity.").

The State of Texas contends that neither theory of non-express

waiver of sovereign immunity is viable against it in this case.

Although Congress amended both the Copyright and Lanham Acts

specifically to abrogate states' immunity from suit in federal

court,6 Texas asserts that these enactments violate recent Supreme

6
The Copyright Act provides in pertinent part:

In general, any State, any instrumentality of a State,
and any officer or employee of a State or
instrumentality of a State acting in his official
capacity, shall not be immune, under the Eleventh
Amendment of the Constitution or under any doctrine of
sovereign immunity, from suit in Federal Court by any
person ... for a violation of any of the exclusive
rights of the copyright owner provided by ... this
Title.

17 U.S.C. § 511(a).

The Lanham Act provides in pertinent part:

Any State, any instrumentality of a State or any
officer or employee of a State or instrumentality of a
State acting in his official capacity, shall not be
immune, under the Eleventh Amendment of the
Constitution or under any doctrine of sovereign
immunity, from suit in Federal Court by any person ...
for any violation under this chapter."

15 U.S.C. § 1122.

8
Court Eleventh Amendment jurisprudence and are ineffective. First,

in Blatchford v. Native Village of Noatak, 501 U.S. 775, 111 S.Ct.

2578, 115 L.Ed.2d 686 (1991), and earlier cases, the Court

allegedly closed the door on the "plan of the convention" theory of

non-express waiver. Second, the State relies upon Welch v. Texas

Dept. of Highways & Public Transportations, 483 U.S. 468, 107 S.Ct.

2941, 97 L.Ed.2d 389 (1987), which, it contends, overruled Parden

v. Terminal Ry. of Alabama Docks Dept., 377 U.S. 184, 84 S.Ct.

1207, 12 L.Ed.2d 233 (1964). In overruling Parden, the Court

rejected the theory that Congress may overcome a state's immunity

from suit in federal court by legislating pursuant to Article I.

While it appears that the state's first argument is correct,

and the plan of the convention theory has never been accepted by

more than four justices in any case, we nevertheless conclude that

Texas's interpretation of Parden is in error under current caselaw.

To explain these conclusions it is necessary to return to

Pennsylvania v. Union Gas, supra, where the issue presented was

whether Congress had the intent and power to abrogate state

immunity from private suit in federal court for violation of a

federal environmental statute. A five-member majority of the Court

held that the Comprehensive Environmental Response, Compensation,

and Liability Act of 1980 (CERCLA), as amended by the Superfund and

Reauthorization Act of 1986 (SARA), unmistakably conveyed

Congress's intent to render States liable in federal court for

9
cleanup costs recoverable under CERCLA.7 Union Gas, 491 U.S. at 8,

109 S.Ct. at 2278. On the issue of congressional authority to

compel a waiver, however, Justice Brennan mustered only a plurality

for his oft-stated view8 that the states waived their immunity in

the "plan of the convention." Applying their plan of the

convention theory, Brennan's plurality held that Congress, acting

pursuant to the Commerce Clause contained in Article I, section 8,

was empowered to abrogate9 Pennsylvania's sovereign immunity and

authorize a private suit against the State in federal court. Four

other justices vehemently dissented against the plan of the

convention theory of waiver. Id. at 30-45, 109 S.Ct. at 2297-2304

(Scalia, J., concurring in part and dissenting in part).

Justice White cast the tie-breaking vote favoring abrogation

of state sovereign immunity, although he also wrote on behalf of

7
Justices Marshall, Blackmun, Stevens, and Scalia joined
this portion of Justice Brennan's opinion.
8
See Employees of Dept. of Public Health & Welf. v.
Missouri, 411 U.S. 279, 317-18, 93 S.Ct. 1614, 1634, 36 L.Ed.2d
251 (1973) (Brennan, J., dissenting); Edelman v. Jordan, 415
U.S. 651, 687, 94 S.Ct. 1347, 1368, 39 L.Ed.2d 662 (1974)
(Brennan, J., dissenting); Atascadero State Hosp. v. Scanlon,
473 U.S. 234, 279-80, 105 S.Ct. 3142, 3166, 87 L.Ed.2d 171 (1985)
(Brennan, J., dissenting); Welch v. Texas Dept. of Highways and
Public Trans., 483 U.S. 468, 504-09, 107 S.Ct. 2941, 2962-65, 97
L.Ed.2d 389 (1987) (Brennan, J., dissenting).
9
The plurality's term "abrogate" appears to be a misnomer.
If the States waived their immunity in the plan of the
convention, there would be no immunity to abrogate. See,
Employees of Dept. of Public Health & Welf. v. Missouri, 411 U.S.
279, 282 n. 1, 93 S.Ct. 1614, 1616 n. 1, 36 L.Ed.2d 251 (1973).
If, on the other hand, the States did not waive their immunity,
Congress would have no power to abrogate it. See Puerto Rico, --
- U.S. ----, ---- - ----, 113 S.Ct. 684, 687-88. But to be
consistent with the Justices' terminology, this opinion will also
use "abrogate."

10
three other justices to dissent from the majority holding that

CERCLA, as amended by SARA, was unmistakably clear in its intent to

abrogate State immunity from suit in federal court. In a single

terse paragraph, Justice White concurred individually in the

Brennan plurality's conclusion that Congress has the power to

abrogate sovereign immunity under its Article I powers, but he

repudiated10 the plurality's reasoning and reaffirmed his allegiance

to Hans. Id. at 56-57, 109 S.Ct. at 2295-96 (White, J., concurring

in part and dissenting in part).11

Justice White's concurrence must be taken on its face to

disavow the plan of the convention theory of waiver. This

10
Earlier in his concurring opinion, Justice White also
voiced his disagreement with the reasoning of the plurality. Id.
at 45, 109 S.Ct. at 2289 (White, J., concurring in part and
dissenting in part).
11
Justice White's conclusion on this issue in Union Gas,
stated in full, is as follows:

My view on the statutory issue has not prevailed,
however, a majority of the Court has ruled that the
statute, as amended, plainly intended to abrogate the
immunity of the States from suit in the federal courts.
I accept that judgment. This brings me to the question
whether Congress has the constitutional power to
abrogate the States' immunity.[FN8] In that respect, I
agree with the conclusion reached by Justice Brennan in
Part III of his opinion, that Congress has the
authority Under Article I to abrogate the Eleventh
Amendment immunity of the States, although I do not
agree with much of his reasoning.
[FN8]
As a preliminary matter, I reiterate my view that
for the reasons stated by the plurality in Welch v.
Texas Dept. of Highways, supra, at 478-88, 107 S.Ct.,
at 2944-54, Hans v. Louisiana, 134 U.S. 1, 10 S.Ct.
504, 33 L.Ed. 842 (1890), should not be overruled.

Union Gas, 491 U.S. at 57, 109 S.Ct. at 2296 & n. 8 (White,
J., concurring in part and dissenting in part).

11
interpretation is consistent with his position in Eleventh

Amendment cases decided before and after Union Gas, as Justice

White has repeatedly parted company from Justice Brennan's attempts

to engraft a plan of the convention theory of waiver into the

Constitution. See, e.g., Parden, 377 U.S. at 198-99, 84 S.Ct. at

1216 (White, J., dissenting from Justice Brennan's theory that the

states surrendered a portion of their sovereignty when they granted

Congress the power to regulate commerce); Employees of Dept. of

Public Health & Welfare v. Missouri, 411 U.S. 279, 93 S.Ct. 1614,

36 L.Ed.2d 251 (1973); Edelman v. Jordan, 415 U.S. 651, 94 S.Ct.

1347, 39 L.Ed.2d 662 (1974); Port Authority Trans-Hudson Corp. v.

Feeney, 495 U.S. 299, 110 S.Ct. 1868, 109 L.Ed.2d 264 (1990).

The plan of the convention theory thus received only four

votes of approbation in Union Gas and failed to become the

constitutional law of the land. Despite his repeated efforts to

secure a fifth vote in other cases, Justice Brennan, concurring in

Feeney, supra, essentially conceded that the plan of the convention

theory of waiver had never succeeded in capturing the Court's

majority. Feeney, 495 U.S. at 310-11, 110 S.Ct. at 1875-76. And

if further proof be needed, the Court's opinion in Blatchford,

decided after Union Gas and concurred in by Justice White,

pointedly observed that in only two classes of cases had the Court

recognized that states waived immunity from suit in the plan of the

convention—suits by sister states and suits by the United States.

Blatchford, 501 U.S. at 780, 111 S.Ct. at 2582. No mention was

made of waiver or abrogation of immunity in the face of

12
congressional action pursuant to Article I.

On this basis, we therefore agree with the state of Texas

that Chavez may not defend the express abrogation of state

sovereign immunity in the Copyright and Lanham Acts by reference to

a plan of the convention theory of waiver.12

In uneasy juxtaposition, however, with his (and the Court's)

disavowal of the plan of the convention theory of waiver stands

Justice White's conviction that Congress may under some

circumstances require state waiver of immunity in federal court as

the price for conducting business regulated by Congress. He first

articulated this position, which includes a requirement that

Congress must expressly abrogate state sovereign immunity, in

Parden, supra:

Only when Congress has clearly considered the problem and
expressly declared that any State which undertakes given
regulable conduct will be deemed thereby to have waived its
immunity should courts disallow the invocation of this
defense.

Parden, 377 U.S. at 198-99, 84 S.Ct. at 1216 (White, J.,

dissenting).

He later joined in an opinion that limited the reach of Parden as

follows:

12
Chavez urges this court to mechanically apply the holding
of Peel v. Florida, 600 F.2d 1070 (5th Cir.1979), in which we
found a waiver in the plan of the convention for legislation
passed pursuant to Congress' Article I war powers. Id. at 1080.
However, since Peel was decided, the intervening Supreme Court
decisions cited herein have rejected this theory of waiver.
Accord Seminole Tribe of Florida v. Florida, 11 F.3d 1016 (11th
Cir.1994), cert. granted, --- U.S. ----, 115 S.Ct. 932, 130
L.Ed.2d 878 (1995) (Judge Tjoflat, the author of both Peel and
Seminole Tribe, does not follow Peel presumably because of the
intervening Supreme Court decisions).

13
 The Parden case in final analysis turned on the question of
waiver, a majority of the Court holding that it was a federal
question since any consent of the State to suit did not arise
from an act "wholly within its own sphere of authority" but in
the area of commerce, which is subject to pervasive federal
regulation.

Employees of Dept. of Public Health and Welfare v. Missouri, 411

U.S. 279, 284, 93 S.Ct. 1614, 1617, 36 L.Ed.2d 251 (1973). The

Court there also noted that Parden involved a railroad business run

by the State of Alabama for profit "in the area where private

persons and corporations normally ran the enterprise." 411 U.S.

284, 93 S.Ct. at 1617.

Finally, Justice White concurred in an opinion for a

five-member majority that overruled Parden "to the extent that [it]

is inconsistent with the requirement that an abrogation of Eleventh

Amendment immunity by Congress must be expressed in unmistakably

clear language." Welch v. Texas Dept. of Highways & Public

Transp., 483 U.S. 468, 477, 107 S.Ct. 2941, 2948, 97 L.Ed.2d 389

(1987). But Welch significantly declined "to consider the validity

of the additional holding in Parden, that Congress has the power to

abrogate the State's Eleventh Amendment immunity under the Commerce

Clause to the extent that the States are engaged in interstate

commerce." Id. at 477 n. 8, 107 S.Ct. at 2948 n. 8.

From Justice White's writing and concurrences in these earlier

cases, we infer the meaning of his vote in Union Gas in favor of

congressional abrogation of state immunity. The underlying suit in

Union Gas alleged that Pennsylvania caused or contributed to the

toxic release when it was excavating a creek for purposes of flood

control. Union Gas, 491 U.S. at 5, 109 S.Ct. at 2277. Justice

14
White evidently decided that if the majority's interpretation of

the environmental statutes prevailed, that is, if Congress

expressly determined to render states suable in federal court for

cleanup costs, Congress had the power to do so under the Commerce

Clause because, as in Parden, the states had voluntarily engaged in

such regulated activities.

In the first section of his concurrence, Justice White

highlights the portion of CERCLA, as amended by SARA, that exempts

from liability costs incident to involuntary and emergency

ownership by the State, except when the State has "caused or

contributed" to the toxic release. Id. at 49-51 & n. 3, 109 S.Ct.

at 2292-93 & n. 3 (White, J., concurring in part and dissenting in

part). That Justice White determined that this affirmative conduct

operated as an implied waiver of State immunity is suggested in a

footnote. White posits:

But under § 9601(20)(D), state and local governments are
liable only if they have "caused or contributed " to a release
of toxic materials. If § 9601(20)(D) is the source of the
Eleventh Amendment waiver, and if, as the Court contends, its
provisions are meant to address all state and local
governments that own or operate toxic sites, then perhaps
Congress abrogated the Eleventh Amendment only far enough to
make States liable under this less stringent rule—whether they
are voluntary or involuntary owners of a site.

Id. at 53 n. 5, 109 S.Ct. 2292 n. 5. (emphasis added).

Justice White later adds, "Congress may have reasoned that

while state and local governments that are involuntary owners

should be exempted from liability under CERCLA, those that actually

cause subsequent discharges should be liable under the statute ..."

Id. at 54 n. 6, 109 S.Ct. at 2294 n. 6 (White, J., concurring in

15
part and dissenting in part) (emphasis added). Therefore, Justice

White, believing that for every Congressional abrogation under the

Commerce Clause there must be an accompanying State waiver,

apparently found an implicit waiver, similar to that in Parden,

inherent in Pennsylvania's alleged conduct which caused or

contributed to the toxic release.13 Justice White's view, as the

fifth vote for abrogation of sovereign immunity in Union Gas, must

be taken as that of the Court. See, e.g., Schlup v. Delo, --- U.S.

----, ----, 115 S.Ct. 851, 877, 130 L.Ed.2d 808 (1995).

In summary, applying the Supreme Court's current Eleventh

13
Additional circumstantial supporting evidence that this
was Justice White's theory of the case is found in Justice
Scalia's dissent.

After discussing why he and three of his colleagues
rejected the plurality's application of the plan of the
convention waiver to the Article I, section 8 context,
Justice Scalia moves to the other potentially applicable
type of waiver recognized by the Court, that of implicit
waiver under Parden. As framed by Justice Scalia, the issue
was whether, by its actions, "Pennsylvania voluntarily
assumed the state liability for private suit" contained in
CERCLA. Id. at 42, 109 S.Ct. at 2303 (Scalia, J.,
concurring in part and dissenting in part). Recognizing
that the implicit waiver theory in Parden had not yet been
overruled, Justice Scalia declared that the time to do so
had arrived. Id. at 43, 109 S.Ct. at 2303 (Scalia, J.,
concurring in part and dissenting in part). He implicitly
criticized Justice White's position: "[T]o acknowledge that
the Federal Government can make the waiver of state
sovereign immunity a condition to the State's action in a
field that Congress has authority to regulate is
substantially the same as acknowledging that the Federal
Government can eliminate state sovereign immunity in the
exercise of its Article I powers—that is, to adopt the very
principle I have just rejected." Id. at 44, 109 S.Ct. at
2304 (Scalia, J., concurring in part and dissenting in
part). Justice Scalia would have had little reason to
address Parden waiver had he not thought it relevant to
Justice White's position.

16
Amendment jurisprudence, we must conclude that although the implied

waiver found in Parden has been narrowed considerably and called

into question, it has never been overruled and, indeed, seems to

have motivated Justice White's crucial fifth vote for concurrence

in Union Gas. Blatchford did not touch on the Parden theory of

waiver or implied consent. Until the Supreme Court determines

otherwise, we must conclude that Congress is authorized expressly

to compel states to waive sovereign immunity from private suits in

federal court under the narrow circumstances found in Parden, i.e.,

when the states opt to conduct business for profit in areas where

Congress conditions participation upon waiver of immunity.

Applying the foregoing discussion of states' immunity to this

case is not difficult. Both the Copyright Act and the Lanham Act

represent valid exercises of Congressional power under the

Copyright Clause, Article I, section 8, clause 8 of the

Constitution. Further, both of these statutes were recently

amended to express in clear and unmistakable language Congress's

intent to abrogate State immunity from suit, as required by

Atascadero State Hosp. v. Scanlon, 473 U.S. 234, 238, 105 S.Ct.

3142, 3145, 87 L.Ed.2d 171 (1985). Although we are aware of no

case that specifically holds that laws passed pursuant to the

Copyright Clause can abrogate State immunity, there is no

principled reason to distinguish between this and other Article I,

section 8 powers entrusted to Congress. Accord Union Gas, 491 U.S.

at 42, 109 S.Ct. at 2303 (Scalia, J., concurring in part and

dissenting in part). Since Texas has not expressly waived its

17
immunity by statute or otherwise, the remaining question is whether

Texas impliedly consented to suit by knowingly participating in the

publishing business, in which Congress has expressly conditioned

states' activity on a waiver of sovereign immunity.

Language intended to abrogate State immunity was added to the

Copyright Act effective November 15, 1990, see note 6, supra, the

amendment responded to court decisions holding that the absence of

clear and unmistakable language precluded waiver of state immunity

under the previously-discussed Supreme Court cases. See, e.g., BV

Engineering v. Univ. of Cal., Los Angeles, 858 F.2d 1394, 1396 (9th

Cir.1988). Chavez and the University entered into a contract

authorizing publication of The Last of the Menu Girls in early

1991. According to the Complaint, the University notified Chavez

in October, 1992 of its intent to publish more copies of the book

than authorized in the contract. Chavez alleges that the

University has published and distributed the additional copies and

in so doing has infringed upon her copyright. The University's

conduct in alleged violation of the agreement occurred after the

1990 amendment of the Copyright Act. Therefore, the University had

notice that its continued participation in the publishing business

for profit was conditioned by Congress upon a waiver of its

immunity from suit in federal court for violations of the Copyright

Act. What is left of Parden governs this suit. Accordingly,

Chavez may proceed with her lawsuit against the University and

Kanellos in his official capacity for alleged violations of the

Copyright Act.

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 Unmistakably clear language intended to abrogate State

immunity was also added to the Lanham Act effective October 27,

1992. See note 6, supra. The Complaint alleges that the

University violated the Lanham Act when it published, without

Chavez's consent, a catalog advertisement of a book entitled

Shattering the Myth, which the catalog described as a collection of

plays selected by Chavez. According to the Complaint, this catalog

was published in or about September 1992—one month before the

abrogation language was added to the Act. To the extent that the

Complaint seeks redress for violations that allegedly occurred

before the amendment was enacted, the State is immune. The State

is not immune, however, from any action or relief sought by Chavez

concerning conduct that occurred after the effective date of the

amendment, when the University is deemed to have had notice of its

contents.

Chavez conceded in oral argument that the abrogation of

immunity in the Copyright Act and Lanham Act does not extend to

state law causes of action. Her state law "right to publicity"

cause of action is thus barred against the University and Kanellos

in his official capacity.

We now turn to Kanellos's contention that he is qualifiedly

immune from suit. Qualified immunity shields from liability

government officials performing discretionary functions "as long as

their actions could reasonably have been thought consistent with

the rights they are alleged to have violated." Anderson v.

Creighton, 483 U.S. 635, 638, 107 S.Ct. 3034, 3038, 97 L.Ed.2d 523

19
(1987); see also Malley v. Briggs, 475 U.S. 335, 341, 106 S.Ct.

1092, 1096, 89 L.Ed.2d 271 (1986) (qualified immunity protects "all

but the plainly incompetent or those who knowingly violate the

law"). This immunity is not merely immunity from liability, but is

also immunity from suit, Siegert v. Gilley, 500 U.S. 226, 231, 111

S.Ct. 1789, 1793, 114 L.Ed.2d 277 (1991), and it is effectively

lost if a case is erroneously permitted to go to trial. Sorey v.

Kellett, 849 F.2d 960, 961 (5th Cir.1988).

The dispositive question is "whether an objectively reasonable

official would understand that the alleged improper actions were

unlawful." Del A. v. Edwards, 855 F.2d 1148, 1151 (5th Cir.1988).

The unlawful act Kanellos is alleged to have committed was

authorizing the printing of copies of Chavez's book in violation of

the Copyright Act. However, paragraph 14 of plaintiff's Complaint

concedes that the contractual provision relating to the duration of

the publishing license is ambiguous. The contract itself, appended

to the plaintiff's Complaint, confirms this ambiguity. Because the

licensing contract was reasonably susceptible to two

interpretations, one of which renders Kanellos's alleged act

perfectly legal, he is entitled to qualified immunity. See

Anderson, 483 U.S. at 641, 107 S.Ct. at 3040 (officer entitled to

qualified immunity if reasonable officer could have believed

actions were lawful in light of information possessed).

Neither the Complaint nor plaintiff's appellate brief clearly

states that Chavez is asserting causes of action against Kanellos

in his individual capacity under the Lanham Act and for violating

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state law privacy rights. Therefore, because plaintiff has failed

to allege facts which would enable her to recover against Kanellos

in his individual capacity, he is entitled to qualified immunity.

See Elliott v. Perez, 751 F.2d 1472, 1473 (5th Cir.1985).

CONCLUSION

For the foregoing reasons, we AFFIRM the district court's

denial of sovereign immunity for actions of the University

undertaken after the amendments to the Copyright and Lanham Acts.

We REVERSE the finding that the University may be sued for invasion

of state law privacy rights and REMAND with instructions to dismiss

this cause of action. We also REVERSE the denial of qualified

immunity for Kanellos and REMAND with instructions to dismiss all

causes of action against him in his individual capacity.

AFFIRMED in part, REVERSED and REMANDED in part.

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