Sofamor Danek Group, Inc. v. Brown

• Decision Date: 15 September 1997
• Docket Number: No. 96-35983,96-35983
• Citation: 124 F.3d 1179
• Parties: 1997-2 Trade Cases P 71,922, 44 U.S.P.Q.2d 1144, 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.
• Court: U.S. Court of Appeals — Ninth Circuit

Page 1179

124 F.3d 1179

1997-2 Trade Cases P 71,922, 44 U.S.P.Q.2d 1144,

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.

No. 96-35983.

United States Court of Appeals, Ninth Circuit.

Argued and Submitted July 8, 1997.

Decided Sept. 15, 1997.

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.

I

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. ("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 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

II

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

A

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 unconsenting states. See Seminole Tribe of Florida v. Florida, 517 U.S. 609, ----, 116 S.Ct. 1114, 1131, 134 L.Ed.2d 252 (1996). The recognition of sovereign immunity embodied in the Eleventh Amendment has not been limited to the suits described in its text, however. See Idaho v. Coeur d'Alene, --- U.S. ----, ----, 117 S.Ct. 2028, 2033, 138 L.Ed.2d 438 (1997); Seminole Tribe, 517 U.S. at ----, 116 S.Ct. at 1122. Acknowledging the broader concept of state sovereign immunity implicit in the Constitution and the respect afforded to states in our federal system, protection from suit has been extended to suits brought by a state's own citizens, Hans, 134 U.S. 1, 10 S.Ct. 504, 33 L.Ed. 842, and to suits invoking the federal-question jurisdiction of Article III courts. See Coeur d'Alene, --- U.S. at ----, 117 S.Ct. at 2033.

With one exception, state immunity from suit extends also to its agencies and officers. See Puerto Rico Aqueduct, 506 U.S. at 142-46, 113 S.Ct. at 686-88; Pennhurst State Sch. & Hosp. v. Halderman, 465 U.S. 89, 101-02, 104 S.Ct. 900, 908-09, 79 L.Ed.2d 67 (1984); Natural Resources Defense Council, 96 F.3d at 421. The Supreme Court recognized the exception in the case of Ex parte Young, 209 U.S. 123, 28 S.Ct. 441, 52 L.Ed. 714 (1908), in which it held that federal courts have jurisdiction over suits against state officers to enjoin official actions that violate federal law, even if the state itself is immune from suit under the Eleventh Amendment. See id. at 155-56, 28 S.Ct. at 452-53. The Ex parte Young doctrine is predicated on the notion that a state cannot authorize one of its agents to violate the Constitution and laws of the United States. See Pennhurst, 465 U.S. at 102, 104 S.Ct. at 908; Ex parte Young, 209 U.S. at 159-60, 28 S.Ct. at 453-54; Natural Resources Defense Council, 96 F.3d at 422; Almond Hill Sch. v. United States Dep't of Agriculture, 768 F.2d 1030, 1034 (9th Cir.1985). A state officer acting in violation of federal law is considered "stripped of his official or representative character" and, consequently, is not shielded from suit by the state's sovereign immunity. See Pennhurst, 465 U.S. at 102, 104 S.Ct. at 908 (quoting Ex parte Young, 209 U.S. at 159-60, 28 S.Ct. at 453-54); Natural Resources Defense Council, 96 F.3d at 422; Almond Hill Sch., 768 F.2d at 1034. As a result, state officials may, in limited circumstances, be subject to suit in federal court "to permit the federal courts to vindicate federal rights and hold [them] responsible to the 'supreme authority of the United States.' " See Pennhurst, 465 U.S. at 105, 104 S.Ct. at 910 (quoting Ex parte Young, 209 U.S. at 160, 28 S.Ct. at 454).

The Supreme Court recently addressed the "proper scope and application" of the Ex parte Young doctrine in Idaho v. Coeur d'Alene. See Coeur d'Alene, --- U.S. at ----, 117 S.Ct. at 2034. Although the "continuing validity" of Ex parte Young was not questioned, the Court cautioned that "application of the Young exception must reflect a proper understanding of its role in our federal system and respect for state courts instead of a reflexive reliance on an obvious fiction." Id. Justice Kennedy, writing for the majority, emphasized that Ex parte Young must be interpreted consistently with the "real interests served by the Eleventh Amendment." Id. To permit federal court jurisdiction in every case where prospective declaratory and injunctive relief is sought against an officer of the state, named in his official capacity, "would be to adhere to an empty formalism and to undermine the principle, reaffirmed just last Term in Seminole Tribe, that Eleventh Amendment immunity represents a real limitation on a federal court's federal-question jurisdiction." Id.

B

Brown argues as an initial matter that Sofamor's claim must fail because Ex parte Young applies only to federal constitutional violations, not to violations of federal statutory law. We have held that Ex parte Young applies to violations of federal...