Johnson v. University of Virginia, Civ. A. No. 84-0036-C.

• Decision Date: 27 March 1985
• Docket Number: Civ. A. No. 84-0036-C.
• Citation: 606 F. Supp. 321
• Court: U.S. District Court — Western District of Virginia
• Parties: David L. JOHNSON, Plaintiff, v. UNIVERSITY OF VIRGINIA, et al., Defendants.

606 F. Supp. 321

David L. JOHNSON, Plaintiff, v. UNIVERSITY OF VIRGINIA, et al., Defendants.

Civ. A. No. 84-0036-C.

United States District Court, Virginia, Charlottesville Division.

March 27, 1985.

John Di Joseph, Arlington, Va., for plaintiff.

John Gibney, Alexander Wellford, David Kohler, Richmond, Va., for defendants.

MEMORANDUM OPINION

MICHAEL, District Judge.

This matter is before the court on defendants' motions to dismiss and motions for summary judgment. Plaintiff has alleged that defendants, the University of Virginia and two of its employees, infringed on plaintiff's copyrights for certain photographs taken at University of Virginia sporting events. Plaintiff has also alleged that defendants lost certain of plaintiff's photographic slides. In response to plaintiff's allegations, defendants argue that plaintiff's copyright claim is barred by the Eleventh Amendment of the United States Constitution, and plaintiff's pendent state claim for the lost photographic slides should be dismissed for lack of jurisdiction. Defendants also argue that plaintiff's claim for statutory damages and attorney's fees in connection with the alleged copyright infringement should be dismissed because plaintiff has not made the requisite showing for such damages and fees. The parties have submitted briefs and presented oral argument on these issues; therefore, defendants' motions are ripe for resolution by the court.

Defendants' Eleventh Amendment argument is premised on the principle that a claim seeking to impose a liability that must be paid out of a state's treasury is generally barred by the Eleventh Amendment. See, e.g., Herer v. Burns, 577 F.Supp. 762, 763 (W.D.Va.1984). The court agrees with defendants that plaintiff's copyright infringement claim derivatively is against the Commonwealth of Virginia, and thus seeks to impose a liability to be paid out of the Commonwealth's treasury. In addition, the court agrees with defendants that any Eleventh Amendment immunity enjoyed here by the Commonwealth would be shared by defendants. Nevertheless, the court believes that the Eleventh Amendment provides no immunity in this case because that immunity was waived by the Copyright Acts of 1909 and 1976.

The parties have noted the split of authority on whether the Copyright Act of 1909 waived the states' Eleventh Amendment immunity from copyright infringement actions. Wihtol v. Crow, 309 F.2d 777 (8th Cir.1962) (holding that the states' Eleventh Amendment immunity was not waived by the 1909 Act); Mills Music, Inc. v. Arizona, 591 F.2d 1278 (9th Cir.1979) (holding that the states' Eleventh Amendment immunity was waived by the 1909 Act). The court is aware of no decisions from any of the other Circuit Courts of Appeals, or from the United States Supreme Court, concerning the effect of the 1909 Act of states' Eleventh Amendment immunity. Similarly, the court is aware of no decisions from the United States Supreme Court or any of the Circuit Courts of Appeals concerning the effect of the Copyright Act of 1976 on the states' Eleventh Amendment immunity.

After carefully reviewing Wihtol and Mills Music, along with the parties' arguments on those cases, the court concludes that Mills Music contains a more well-reasoned and thorough analysis of the Eleventh Amendment and the 1909 Act's effect on the states' Eleventh Amendment immunity. Indeed, Wihtol provides little more than a conclusory statement that the Eleventh Amendment bars suits against the states, their instrumentalities, and their agents acting within the scope of their employment. 309 F.2d at 781-782.¹ By contrast, Mills Music includes a thoughtful examination of the 1909 Act and the recent Supreme Court opinions concerning the Eleventh Amendment, particularly Edelman v. Jordan, 415 U.S. 651, 94 S.Ct. 1347, 39 L.Ed.2d 662 (1974) (holding that a waiver of the states' Eleventh Amendment immunity must be explicit or overwhelmingly apparent).

Cognizant of the holding in Edelman, the Mills Music court determined that in enacting the 1909 Act, Congress had authorized copyright infringement suits against the states. The Mills Music court based that determination in large part on the following language from the 1909 Act:

If any person shall infringe the copyright in any work protected under the copyright laws of the United States such person shall be liable ... to pay to the copyright proprietor such damages as the copyright proprietor may have suffered due to the infringement, as well as all the profits which the infringer shall have made from such infringement.

17 U.S.C. § 101 (emphasis supplied in Mills Music opinion). According to the Mills Music court, Congress' use of the abovequoted "sweeping language" without limitation was a sufficient indication of congressional intent to include states within the class of defendants liable for damages and equitable relief in copyright infringement actions. 591 F.2d at 1285.²

Since Mills Music is a thorough and wellreasoned opinion, this court concludes with the Mills Music court that the 1909 Act waived the states' Eleventh Amendment immunity to copyright infringement actions. Nevertheless, that conclusion does not end the inquiry here because the present action is brought under the Copyright Act of 1976.

The 1976 Act does not contain the same language quoted above from 17 U.S.C. § 101, on which the Mills Music court relied. However, the parallel provision in the 1976 Act, 17 U.S.C. § 501, contains the following language:

Anyone who violates any of the exclusive rights of the copyright owner as provided by sections 106 through 118, or who imports copies or phonorecords into the United States in violation of section 602, is an infringer of the copyright.

17 U.S.C. § 501(a) (emphasis supplied).

Based on a comparison of the language in these parallel provisions, the court believes that the Mills Music court's analysis of the 1909 Act is equally compelling, if not more compelling with respect to the 1976 Act. Whereas the 1909 Act prohibited "any person" from infringing on a copyright, the 1976 Act prohibits "anyone" from so doing. Thus, the language of the 1976 Act is at least as sweeping, and probably more sweeping, than the language of the 1909 Act in identifying the class of defendants subject to copyright infringement suits. Therefore, based on the Mills Music analysis of the 1909 Act, and this court's examination of the operative language of the 1976 Act, the court determines that the 1976 Act waived the states' Eleventh Amendment immunity from liability for damages and equitable relief for copyright infringements. As such, the court denies defendants' motions insofar as they rely on the Eleventh Amendment as grounds for dismissing or entering summary judgment on plaintiff's copyright infringement claim.

Aside from the Eleventh Amendment argument, defendants argue that plaintiff's pendent state claim for the lost photographic slides must be dismissed because that claim and plaintiff's copyright infringement claim do not "derive from a common nucleus of operative fact" and are not so closely related that ordinarily plaintiff would "be expected to try them both in one judicial proceeding." UMW v. Gibbs, 383 U.S. 715, 725, 86 S.Ct. 1130, 1138, 16 L.Ed.2d 218 (1966). In opposition, plaintiff contends that the two claims should be tried together because defendants' loss of the photographic slides was related to, and caused by defendants' infringing on plaintiff's copyrights through widespread distribution of the photographic slides.

The court recognizes the possibility of some connection between the loss of plaintiff's photographic slides and defendants' alleged copyright infringement. Nevertheless, the possibility of such a connection does not establish the kind of nexus between the plaintiff's federal and state claims which would satisfy the above-mentioned standard for pendent jurisdiction announced in Gibbs. Consequently, the court grants defendants' motions insofar as they request the dismissal of plaintiff's state claim for the loss of the photographic slides.

Finally, defendants argue that plaintiff's request for statutory damages and attorney's fees in connection with his copyright infringement claim is barred by the express language of 17 U.S.C. § 412, which states:

In any action under this title, other than an action instituted under section 411(b), no award of statutory damages or of attorney's fees, as provided by sections 504 and 505, shall be made for —

(1) any infringement of copyright in an unpublished work commenced before the effective date of its registration; or

(2) any infringement of copyright commenced after first publication of the work and before the effective date of its registration, unless such registration is made within three months after the first publication of the work.

Defendants note that the photographs at issue here were not registered until March 12, 1984, and defendants' affidavits show that their allegedly unauthorized first use of those photographs...