Chavez v. Arte Publico Press

• Decision Date: 01 August 1995
• Docket Number: No. 93-2881,93-2881
• Citation: 59 F.3d 539
• Parties: , 1995 Copr.L.Dec. P 27,419, 101 Ed. Law Rep. 620, 35 U.S.P.Q.2d 1609 Denise CHAVEZ, Plaintiff-Appellee, v. ARTE PUBLICO PRESS, et al., Defendants-Appellants.
• Court: U.S. Court of Appeals — Fifth Circuit

Page 539

59 F.3d 539

64 USLW 2094, 1995 Copr.L.Dec. P 27,419,

101 Ed. Law Rep. 620,

35 U.S.P.Q.2d 1609

Denise CHAVEZ, Plaintiff-Appellee, v. ARTE PUBLICO PRESS, et al., Defendants-Appellants.

No. 93-2881.

United States Court of Appeals,

Fifth Circuit.

Aug. 1, 1995.

Patrick J. Feeney, Asst. Atty. Gen., Dan Morales, Atty. Gen., Austin, TX, John R. Feather, Vaden, Eickenroht, Thompson, Boulware & Feather, Houston, TX, for appellants.

David Gunn, Kenneth E. Kuffner, Jeffrey L. Streets, Gunn & Kuffner, Houston, TX, Jeffrey A. Pyle, Vaden, Eickenroht, Thompson & Feather, Houston, TX, for appellee.

Charles S. Sims, Karen E. Clarke, Proskauer, Rose, Goetz & Mendelsohn, New York City, Jon A. Baumgarten, Proskauer, Rose, Goetz & Mendelsohn, Washington, DC, for amicus curiae Ass'n of American Publishers.

Kathleen A. Murray, New York City, for amicus curiae Author's Guild.

Michael E. Robinson, Robert V. Zener, U.S. Dept. of Justice, Washington, DC, intervenor for appellee.

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.

BACKGROUND ¹

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