Chavez v. Arte Publico Press

• Decision Date: 20 April 1998
• Docket Number: No. 93-2881,93-2881
• Citation: 157 F.3d 282
• Parties: 129 Ed. Law Rep. 935 Denise CHAVEZ, Plaintiff-Appellee, United States of America, Intervenor, v. ARTE PUBLICO PRESS; Nicolas Kanellos; University of Houston, Defendants-Appellants.
• Court: U.S. Court of Appeals — Fifth Circuit

Page 282

157 F.3d 282

129 Ed. Law Rep. 935

Denise CHAVEZ, Plaintiff-Appellee, United States of America, Intervenor, v. ARTE PUBLICO PRESS; Nicolas Kanellos; University of

Houston, Defendants-Appellants.

No. 93-2881.

United States Court of Appeals,

Fifth Circuit.

April 20, 1998.

As Revised Oct. 1, 1998.

Kenneth E. Kuffner, Kuffner & Associates, Jeffrey Lowell Streets, Houston, TX, David Michael Gunn, Hogan, Dubos & Townsend, Houston, TX, for Plaintiff-Appellee.

Michael Eugene Robinson, Mark Bernard Stern, U.S. Dept. of Justice, Civ. Div., App. Staff, Robert V. Zener, Washington, DC, for Intervenor.

Patrick J. Feeney, Austin, TX, John Russel Feather, Bush, Moseley, Riddle & Jackson, Houston, TX, for Defendants-Appellants.

Charles J. Sanders, New York City, Carey R. Ramos, Paul, Weiss, Rifkind, Wharton & Garrison, Charles S. Sims, Prokaver, Rose, Goetz & Mendelsohn, New York City, for Amicus Curiae Ass'n of American Publishers, Inc., The Authors Guild, Inc., Ass'n of American University Presses, Inc., Nat. Music Publishers Ass'n, Inc., Software Publishers Ass'n, American Society of Journalists and Authors, Inc., American Society of Media Photographers, Inc. and Copyright Clearance Center, Inc.

Peter L. Felcher, Paul, Weiss, Rifkind, Wharton & Garrison, Jon Alan Baumgarten, Proskauer, Rose, Goetz, Mendelsohn, New York City, for Amicus Curiae, Ass'n of American Publishers, Inc., The Authors Guild, Inc., Ass'n of American University Presses, Inc., The Nat. Music Publishers Ass'n, Inc and Software Publishers Assn.

Stephanie A. Gore, Paul, Weiss, Rifkind, Wharton & Garrison, New York City, for Amicus Curiae The Nat. Music Publishers Ass'n, Inc.

Christopher Allan Meyer, Michael R. Klipper, Meyer & Klipper, Washington, DC, for Amicus Curiae, American Society of Composers, Authors and Publishers, Broadcast Music, Inc., Business Software Alliance, Inc., Information Industry Ass'n, Motion Picture Ass'n of America, Inc. and Recording Industry Ass'n of America.

Charles L. Gholz, Oblon, Spivak, McClelland, Maier & Neustadt, Arlington, VA, for American Intellectual Property Law Ass'n, Amicus Curiae.

Martin H. Redish, Northwestern School of Law, Chicago, IL, for International Trademark Ass'n, Amicus Curiae.

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

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

ON REMAND FROM THE SUPREME COURT OF THE UNITED STATES

EDITH H. JONES, Circuit Judge:

This Copyright/Lanham Act case was remanded from the Supreme Court for reconsideration in light of its decision in Seminole Tribe of Fla. v. Florida, 517 U.S. 44, 116 S.Ct. 1114, 134 L.Ed.2d 252 (1996). The issue is whether Congress properly exercised 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. ¹ This time, we agree with the University.

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, 116 S.Ct. at 1123. Congress recently amended both the Lanham Act and 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, still troubling question is whether Congress had power to compel states to surrender their Eleventh Amendment immunity for these purposes.

In our previous opinion, we concluded that the Supreme Court's variegated jurisprudence supported the theory that the University of Houston impliedly waived Eleventh Amendment immunity because the University chose to enter into a contract with Chavez and use her name after Congress had imposed statutory waivers in the Copyright and Lanham Acts. The state's price of doing business in those areas included the possibility of suit in federal court. This conclusion derived from our understanding of the Parden theory of implied waiver of state sovereign immunity. See Parden v. Terminal Ry. of Ala. State Docks Dept., 377 U.S. 184, 84 S.Ct. 1207, 12 L.Ed.2d 233 (1964).

Chavez and numerous amici who filed post-remand briefs contend that the Parden implied waiver theory survived Seminole, and, alternatively, that the provisions in question validly implement congressional power under section 5 of the Fourteenth Amendment. No party now asserts, in light of Seminole, that Congress could statutorily abrogate Eleventh Amendment immunity pursuant to its constitutional powers to regulate commerce or copyrights under Article I, Section 8. ³ Although Chavez's theories are weighty, we find them unpersuasive.

I. The Status of Parden.

It would be superfluous to recount this panel's previous discussion of pre-Seminole cases. Suffice it to summarize that Parden, in historical context, seemed to imply that a state impliedly consented to suit in federal court when it undertook non-sovereign activities in areas regulated by the federal government. Seizing on our conclusion, Chavez points out that Seminole cites Parden as "a case holding the unremarkable, and completely unrelated, proposition that the States may waive their sovereign immunity." Seminole, 116 S.Ct. at 1128 (citing Parden ). This language, embedded in a critique of the reasoning in the Union Gas decision, ⁴ is interpreted by Chavez as a reaffirmation of Parden. Parden held that when the State of Alabama undertook to operate a railroad, it did so subject to the Federal Employees Liability Act, which permits suit against interstate railroads in federal court, and thus waived its Eleventh Amendment immunity. Chavez reads the reference in Seminole to approve Parden for the proposition that when a state conducts business in an area subject to federal regulation, and the federal government has expressly conditioned participation in that business on a waiver of Eleventh Amendment immunity, the state's conduct effectuates such a waiver. This is in fact the interpretation of Parden used by this court in our previous opinion to explain Justice White's respective positions in Parden and in Union Gas. See Chavez v. Arte Publico Press, 59 F.3d 539, 545-46 (5th Cir.1995) [hereinafter Chavez I ].

Whether this interpretation fairly reflects Seminole, however, is another matter. Seminole cites Parden only for the statement that "states may waive their sovereign immunity," which is a matter of hornbook law analytically separate from congressional overruling of state sovereign immunity. Seminole quashed the latter proposition when it unequivocally overturned Union Gas:

[B]oth the result in Union Gas and the plurality's rationale depart from our established understanding of the Eleventh Amendment and undermine the accepted function of Article III. We feel bound to conclude that Union Gas was wrongly decided and that it should be, and now is, overruled.

Seminole, 116 S.Ct. at 1128. The Court necessarily disavowed not only the Union Gas plurality reasoning (the "plan of the convention" theory of Eleventh Amendment waiver), but also Justice White's fifth vote in favor of the Union Gas result. Justice White's Union Gas concurrence, we inferred in the previous opinion, had to be based on the Parden theory of implied waiver. We cannot understand how the Court could have overruled Union Gas only in regard to the 4-vote plurality opinion and not in toto, and we do not believe it attempted such a feat.

For other reasons, Seminole suggests that the Parden implied waiver theory has been rejected. First, Seminole expressly incorporates much of the reasoning of Justice Scalia's dissent in Union Gas, a dissent agreed upon by the same members of the Court who formed the core of the Seminole majority. Justice Scalia's dissent explicitly criticizes and describes the sleight of hand involved in the Parden implied waiver theory:

[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 [abrogation of state sovereignty] I have just rejected.

Union Gas, 491 U.S. at 44, 109 S.Ct. at 2304 (Scalia, J., concurring in part and dissenting in part). As Scalia explained,

all federal prescriptions are, insofar as their prospective application is concerned, in a sense conditional, and--to the extent that the objects of the prescriptions consciously engage in the activity or hold the status that produces liability--can be redescribed as invitations to "waiver."

Id. at 43, 109 S.Ct. at 2303 (emphasis in original). Scalia concludes, "If state sovereign immunity has any reality, it must mean more than this." Id. at 44, 109 S.Ct. 2304.

Second, Seminole reaches the broad conclusion that:

Even when the Constitution vests in Congress complete lawmaking authority over a particular area, the Eleventh Amendment prevents Congressional authorization of suits by private parties against unconsenting states. The Eleventh Amendment restricts the judicial power under Article III, and Article I cannot be used to circumvent the constitutional limitations placed upon federal jurisdiction.

Seminole, 116 S.Ct. at 1131-32 (footnote omitted). In the footnote accompanying this holding, the Court comments on Justice Stevens's criticism that Seminole will prohibit federal jurisdiction over suits to enforce the bankruptcy,...