Rodriguez v. Texas Commission on the Arts

UNITED STATES COURT OF APPEALS

FOR THE FIFTH CIRCUIT

No. 98-10251
Summary Calendar

ABEL RODRIGUEZ,

Plaintiff-Appellant,

Versus

TEXAS COMMISSION ON THE ARTS,

Defendant-Appellee.

Appeal from the United States District Court
For the Northern District of Texas
January 10, 2000
Before DAVIS, DUHÉ and PARKER, Circuit Judges.

ROBERT M. PARKER, Circuit Judge.

Plaintiff sued the Texas Commission on the Arts in federal

court alleging copyright infringement. Plaintiff appeals
decision of the United States District Court for the Northern

District of Texas dismissing plaintiff's suit for lack of subject

matter jurisdiction. Because we find that the Copyright

Clarification Act, 17 U.S.C. § 511 (1994), does not abrogate a

state's Eleventh Amendment immunity pursuant to a valid exercise

of congressional power, we AFFIRM.

FACTS AND PROCEEDINGS BELOW

Plaintiff claims that the Arts Commission infringed on his
design for Texas license plates, a design which he registered

with the United States Copyright Office, when it started selling

its specialized “State of the Arts” license plates to Texas

residents. In response to plaintiff's complaint, defendant filed

a motion to dismiss for lack of subject matter jurisdiction and

for failure to state a claim upon which relief can be granted.

The district court granted defendant's motion to dismiss and

entered an order dismissing the complaint for lack of subject

matter jurisdiction pursuant to FED R. CIV. P. 12(b)(1).

Plaintiff argues on appeal that the district court's ruling is

erroneous because Congress had the power to pass a law that gave

plaintiff a cause of action for copyright infringement against

the State of Texas.

STANDARD OF REVIEW

We review a district court's grant of a motion to dismiss

for lack of subject matter jurisdiction de novo. See Herbert v.

United States, 53 F.3d 720, 722 (5th Cir. 1995); see also EP

Operating Ltd. Partnership v. Placid Oil Co., 26 F.3d 563, 566

(5th Cir. 1994) (“This Court reviews dismissal under Fed. R. Civ.

P. 12(b)(1) de novo using the same standards employed by the

district court.”).

DISCUSSION

Citizens may not bring suit against a state or any

instrumentality thereof without the state's consent. See U.S.

Const. amend. XI.; Hans v. Louisiana, 134 U.S. 1, 15 (1890)

(noting that federal jurisdiction over suits against unconsenting

states “was not contemplated by the Constitution when

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establishing the judicial power of the United States”).

Plaintiffs contend that Congress's enactment of the Copyright

Remedy Clarification Action of 1990, 17 U.S.C. § 511(a) (1994),

validly abrogated the States' sovereign immunity from suit in

copyright matters.

To determine whether Congress abrogated a state's sovereign

immunity, we must ask two questions: first, whether Congress

unequivocally expressed its intent to abrogate such immunity, and

second, whether Congress acted pursuant to a valid exercise of

its power. See Seminole Tribe v. Florida, 517 U.S. 44, 55

(1996). That we agree with the district court's finding that the

Copyright Act's plain language1 “makes it indubitable that

Congress intended through this Act to abrogate the States'

sovereign immunity from suit in copyright matters” needs little

explanation. Therefore, we turn to our analysis of whether

Congress acted pursuant to a valid exercise of its power in

enacting the Copyright Act.

Congress may not abrogate sovereign immunity unless its does

1
The abrogation provision of the Copyright Act states:

Any State, any instrumentality of a State, and any
officer or employee of a State or instrumentality of a
State acting in his or her official capacity, shall not
be immune, under the Eleventh Amendment of the
Constitution of the United States or under any other
doctrine of sovereign immunity, from suit in Federal
court by any person, including any governmental or
nongovernmental entity, for a violation of any of the
exclusive rights of a copyright owner provided by
sections 106 through 119, for importing copies of phono
records in violation of section 602, or for any other
violation under this title.

17 U.S.C. § 511(a) (1994).

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so in accordance with a valid exercise of its power. See

Seminole Tribe, 517 U.S. at 55. “Seminole Tribe makes clear that

Congress may not abrogate state sovereign immunity pursuant to

its Article I powers; hence the . . . Act cannot be sustained

under either the Commerce Clause or the Patent Clause.” Florida

Prepaid Postsecondary Educ. Exp. Bd. v. College Savings Bank, ---

U.S. ---, ---, 119 S. Ct. 2199, 2204 (1999). Therefore, the

Copyright Act's sovereign immunity abrogation provision may only

be constitutionally justified under the Fourteenth Amendment.

The United States Supreme Court recently addressed this very

question in the context of the Patent and Plant Variety

Protection Remedy Clarification Act, 37 U.S.C. 296(a) (1994 ed.

and Supp. III). In College Savings Bank, the Supreme Court held

that the Patent Remedy Act cannot be sustained as legislation

enacted to enforce the guarantees of the Fourteenth Amendment's

Due Process Clause. See --- U.S. at ---, 119 S. Ct. at 2205-11.

It is appropriate for us to adopt this analysis in the copyright

context. The interests Congress sought to protect in each

statute are substantially the same and the language of the

respective abrogation provisions are virtually identical.

Compare 17 U.S.C. § 511(a) (1994) with 35 U.S.C. § 296(a) (1994

ed. and Supp. III). Therefore, the decision of the district

court is AFFIRMED.

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