124 F.3d 1179 (9th Cir. 1997), 96-35983, Sofamor Danek Group, Inc. v. Brown

Docket Nº:96-35983.
Citation:124 F.3d 1179
Party Name:97 Cal. Daily Op. Serv. 7379 SOFAMOR DANEK GROUP, INC., Plaintiff-Appellee, v. Mark BROWN, in his official capacity as Director of the State of Washington Department of Labor and Industries, Defendant-Appellant.
Case Date:September 15, 1997
Court:United States Courts of Appeals, Court of Appeals for the Ninth Circuit

Page 1179

124 F.3d 1179 (9th Cir. 1997)

97 Cal. Daily Op. Serv. 7379

SOFAMOR DANEK GROUP, INC., Plaintiff-Appellee,


Mark BROWN, in his official capacity as Director of the

State of Washington Department of Labor and

Industries, Defendant-Appellant.

No. 96-35983.

United States Court of Appeals, Ninth Circuit

September 15, 1997

Argued and Submitted July 8, 1997.

Page 1180

[Copyrighted Material Omitted]

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Beverly Norwood Goetz, Assistant Attorney General, Seattle, WA, for defendant-appellant.

Christopher W. Tompkins, Betts, Patterson & Mines, Seattle, WA, and Edward M. Basile, King & Spalding, Washington, DC, for plaintiff-appellee.

Appeal from the United States District Court for the Western District of Washington; J. Kelly Arnold, Magistrate Judge, Presiding. D.C. No. CV-96-05543-RJB.

Before: REAVLEY, [*] O'SCANNLAIN and FERNANDEZ, Circuit Judges.

O'SCANNLAIN, Circuit Judge:

We must decide whether an official of the State of Washington is subject to suit in federal court for alleged violations of federal trademark law.


Mark Brown, Director of the Department of Labor and Industries of the State of Washington, appeals interlocutorily the district court's order denying his motion to dismiss an action brought against him pursuant to § 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), 1 by Sofamor Danek Group, Inc.

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("Sofamor"), a manufacturer of spinal fixation devices implanted as part of lumbar fusion spinal surgery. Brown claims that the district court erred in not finding him immune from suit under the Eleventh Amendment of the United States Constitution. Sofamor is currently seeking an injunction in the district court prohibiting Brown from making allegedly false and misleading statements in violation of the Lanham Act regarding its spinal fixation devices in a document issued by the Department.

In his capacity as Director of the Department, Brown administers the Industrial Insurance Act ("Act"). Wash. Rev.Code § 51. The Act is a statutory scheme created by the legislature of the State of Washington to provide "sure and certain relief for workers, injured in their work, and their families or dependents." Id. § 51.04.010. The State of Washington provides insurance (including medical insurance) for workers directly, rather than requiring employers to purchase such insurance from private insurance companies. Id.

Among Brown's legislatively-mandated functions is the supervision of "medical, surgical, and hospital treatment to the intent that it may be in all cases efficient and up to the recognized standard of modern surgery." Id. § 51.04.020(4). Brown is also required to:

[S]upervise the providing of prompt and efficient care and treatment ... and to that end shall, from time to time, establish and promulgate and supervise the administration of printed forms, rules, regulations, and practices for the furnishing of such care and treatment....

Id. § 51.04.030.

Pursuant to the foregoing, the Department issued medical guidelines regarding lumbar fusion surgery and a "Lumbar Fusion Informed Consent Form" ("Consent Form"). Brown required that the surgeon and the patient sign the Consent Form before undergoing any lumbar fusion surgery on the lower spine that would be covered by the Act. The Consent Form contains, inter alia, statements regarding the effectiveness of lumbar fusion spinal surgery in general and, more specifically, the regulatory status of and risks associated with pedicle screw device systems, which Sofamor manufactures. Sofamor claims that the statements in the Consent Form concerning spinal fixation devices (such as Sofamor's) are false and misleading in violation of the Lanham Act.

Sofamor filed suit in federal district court on June 3, 1996, seeking a prospective injunction against Brown "in his official capacity as Director of the State of Washington Department of Labor & Industries." In its complaint, followed immediately by a motion for preliminary injunction, Sofamor sought an injunction prohibiting:

Brown, and his agents or employees ... from adopting, publishing, or requiring use of the Consent Form, or any required consent form, or the dissemination of specified information with respect to Sofamor's pedicle screw spinal devices.

Sofamor sought neither money damages nor a declaratory judgement. Sofamor alleged that Brown uses the Consent Form for a commercial purpose, and that Sofamor is suffering commercial harm as a result of the alleged false and misleading statements therein.

In response, Brown moved to dismiss Sofamor's complaint based on lack of subject matter jurisdiction pursuant to Fed.R.Civ.P. 12(b)(1), and failure to state a claim upon which relief can be granted under Fed.R.Civ.P. 12(b)(6). Brown claimed, inter alia, that he was immune from suit by virtue of the Eleventh Amendment, and that § 43(a) of the Lanham Act was inapplicable to the Consent Form.

By consent of the parties, Magistrate Judge J. Kelly Arnold heard and decided Sofamor's motion for a preliminary injunction and Brown's motion to dismiss, denying both motions. Brown unsuccessfully moved

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the district court on July 25, 1996, for reconsideration of the denial of his motion to dismiss and thereafter filed a timely notice of appeal. 2


The sole issue before us is whether the district court erred in failing to dismiss Sofamor's complaint on Eleventh Amendment 3 grounds.


The Eleventh Amendment creates an important limitation on federal court jurisdiction, generally prohibiting federal courts from hearing suits brought by private citizens against state governments without the state's consent. See Hans v. Louisiana, 134 U.S. 1, 15, 10 S.Ct. 504, 507, 33 L.Ed. 842 (1890); Natural Resources Defense Council v. California Dep't of Transportation, 96 F.3d 420, 421 (9th Cir.1996). Even when Congress is vested with complete law-making authority over a particular area by the Constitution, the Eleventh Amendment prevents congressional authorization of suits by private parties against...

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