Nat'l Ass'n of Boards of Pharmacy v. Bd. of Regents of The Univ. System of Ga.

• Decision Date: 24 February 2011
• Docket Number: No. 08–13417.,08–13417.
• Citation: 633 F.3d 1297
• Parties: NATIONAL ASSOCIATION OF BOARDS OF PHARMACY, Plaintiff–Appellant,v.BOARD OF REGENTS OF THE UNIVERSITY SYSTEM OF GEORGIA, Flynn Warren, Jr., Henry H. Cobb, III, Individually, Elridge W. McMillan, in his official capacity as a member of The Board of Regents of the University System of Georgia, Donald M. Leebern, Jr., in his official capacity as a member of The Board of Regents of the University System of Georgia, et al., Defendants–Appellees.
• Court: U.S. Court of Appeals — Eleventh Circuit

633 F.3d 1297

265 Ed. Law Rep. 473

97 U.S.P.Q.2d 1931

22 Fla. L. Weekly Fed. C 1809

NATIONAL ASSOCIATION OF BOARDS OF PHARMACY, Plaintiff–Appellant,

v.BOARD OF REGENTS OF THE UNIVERSITY SYSTEM OF GEORGIA, Flynn Warren, Jr., Henry H. Cobb, III, Individually, Elridge W. McMillan, in his official capacity as a member of The Board of Regents of the University System of Georgia, Donald M. Leebern, Jr., in his official capacity as a member of The Board of Regents of the University System of Georgia, et al., Defendants–Appellees.

No. 08–13417.

United States Court of Appeals, Eleventh Circuit.

Feb. 24, 2011.

OPINION TEXT STARTS HEREWest CodenotesHeld Invalid17 U.S.C.A § 511(a)17 U.S.C.A. § 501(a) J. Rodgers Lunsford, III, Todd Douglas Williams, Smith, Gambrell & Russell, LLP, Atlanta, GA, for Plaintiff–Appellant.Alan E. Lubel, Law Office of Alan E. Lubel, P.C., Julie A. Tennyson, Jeffrey C. Morgan, Troutman Sanders, Kevin Allen Maxim, The Maxim Law Firm, P.C., Atlanta, GA, for Defendants–Appellees.Appeal from the United States District Court for the Middle District of Georgia.Before DUBINA, Chief Judge, TJOFLAT, Circuit Judge, and WALTER, ^* District Judge.TJOFLAT, Circuit Judge:

This is an action for copyright infringement. The National Association of Boards of Pharmacy (“NABP”) seeks damages and injunctive relief under the Copyright Remedies Clarification Act, 17 U.S.C. § 511(a) (the “CRCA”), against the Board of Regents of the University System of Georgia (the “Board of Regents”), its members (the “Members”), and several University of Georgia officials (the “University Officials”) for appropriating NABP's written materials protected by the Copyright Act.¹ The district court dismissed NABP's claims for damages as barred by the Eleventh Amendment. The court denied NABP injunctive relief on the ground that the copyright infringements complained of had ceased. NABP now appeals.

Part I lays out the facts and procedural history of the case. Part II discusses the jurisdictional issue surrounding NABP's premature notice of appeal. Part III addresses the Eleventh Amendment issues, with subpart III.A discussing NABP's claim for injunctive relief against the Members and University Officials under Ex parte Young² and subpart III.B discussing whether the CRCA validly abrogates the States' sovereign immunity under either the Patent and Copyright Clause of Article I of the Constitution or § 5 of the Fourteenth Amendment so as to render the Board of Regents subject to a damages award. Part IV concludes.

I.

NABP is a nonprofit corporation whose membership consists of state and foreign pharmacy boards charged by law with licensing and regulating pharmacists. ³ NABP develops and administers two examinations the pharmacy boards use to evaluate applicants for pharmacist licenses—the North American Pharmacist Licensure Examination (“NAPLEX”), which consists of copyrighted, multiple-choice test questions, and the Multistate Pharmacy Jurisprudence Examination (“MPJE”). To sit for the NAPLEX, applicants must register with NABP and acknowledge that the exam is proprietary and subject to copyright protection.

In the summer of 1994, NABP received numerous tips that University of Georgia (“University” or “UGA”) Professor Flynn Warren was gathering actual NAPLEX questions for use in a NAPLEX review course he was teaching. Believing this to be a breach of its copyrights, NABP looked into the matter and discovered that Warren was indeed using NAPLEX questions in his review course. NABP complained to UGA, and, in 1995, the Board of Regents and Warren entered into a settlement agreement with NABP, in which the Board of Regents (on behalf of UGA) and Warren agreed to cease and desist all copying, transcribing or other use of NABP copyrighted materials and examination questions. The agreement also allowed NABP to monitor compliance with the agreement. For two years, UGA was required to provide NABP with copies of all new course materials; thereafter, UGA would provide NABP with the course materials upon request.

In 2007, NABP learned that Warren was again gathering and disseminating NAPLEX questions for the review course he taught at UGA and Samford University, where he was a visiting professor. Warren obtained NAPLEX questions by having recent examinees send him questions they remembered seeing on the exam. Through this scheme, he compiled hundreds of NAPLEX questions for his review materials.

NABP's attorney, Kerri Hochgesang, purchased materials for a “Pharmacy Board Review” course taught by Warren and Professor Henry H. Cobb III of the Continuing Education Office of the College of Pharmacy at UGA. The materials cost $100.00 and were purchased from the College of Pharmacy itself. NABP reviewed the materials and determined that at least 150⁴ of the questions they contained were verbatim, nearly verbatim, or substantially similar to NAPLEX questions. Each compromised NAPLEX question is no longer valid for measuring the competency of pharmacy graduates who sit for the NAPLEX. The questions were discarded and the expense NABP incurred in replacing the questions was incalculable.

On August 3, 2007, NABP brought this action for damages and injunctive relief against the Board of Regents and Warren, in his individual capacity, for appropriating NABP's NAPLEX questions. The complaint contained three counts, asserted against both the Board of Regents and Warren. Count I, for copyright infringement, was brought under the Copyright Act, 17 U.S.C. §§ 501 and 511.⁵ Count II, for misappropriation of trade secrets, was brought under the Georgia Trade Secrets Act of 1990, O.C.G.A. § 10–1–760 et seq. ⁶ Count III, for breach of contract, was based on the 1995 settlement agreement.⁷ NABP immediately moved the district court to issue a temporary restraining order (“TRO”) and a preliminary injunction.

The court issued a TRO the same day, August 3. The order directed the U.S. Marshal, assisted by NABP's attorneys, to search the UGA College of Pharmacy and to seize and impound:

(a) all documents, handouts, disks, CD–ROMs, e-mails, web-postings, slide shows, books, advertisements, programs, or similar material containing NABP's copyrighted examination questions, and/or the identity, address, telephone number, and e-mail address of individuals attending Flynn Warren's review course and/or receiving such examination questions from him, and computers in the custody or control of Defendant Flynn Warren, Jr. while employed at the [UGA] within the custody and control of the [UGA].

(b) ... all books, records, correspondence and other documents in Defendant Warren's possession, custody or control which relate to said copyrighted examination questions or identity of such individuals.

In addition, the order temporarily restrained the

defendants, their officers, directors, principals, agents ... and all those acting in concert or participation with them ... from[, among other things]

(a) Infringing ... NABP's ... copyrights and specifically from copying, duplicating, distributing, selling, publishing, reproducing, publicly performing, displaying, preparing derivative works based on, renting, leasing, offering, using in their advertising or otherwise transferring or communicating ... printed, audio, photographic, electronic or other form, including any communication in any class ... any questions from any test copyrighted by NABP ... without ... permission ... from NABP;

(b) Debriefing or otherwise intentionally or knowingly obtaining from any past examinee or other person questions from any test that NABP has not voluntarily disclosed to the general public including but not limited to any for[m] of the NAPLEX, and whether or not such questions are identical or substantially similar to the actual NAPLEX questions; [and]

(c) misappropriating NABP's trade secrets[.]

The district court scheduled a hearing on NABP's application for a preliminary injunction for August 14. On August 9, the parties jointly moved the court to postpone the hearing until August 21 and to extend the TRO through that date. The court granted the motion.

On August 20, the Board of Regents moved the district court to dismiss the case for lack of subject matter jurisdiction—on the ground that the Eleventh Amendment prohibited the court from entertaining the case.⁸ At the hearing on August 21, the Board of Regents's counsel represented to the court that the materials described in the TRO had been seized and that his client would voluntarily comply with the TRO's injunctive provisions. Counsel also informed the court that the review course scheduled to begin in August had been cancelled and that Professor Warren was no longer teaching the review course. The court accepted counsel's representations, did not extend the TRO, and deferred consideration of NABP's application for a preliminary injunction until it resolved the Eleventh Amendment jurisdictional issue.

On October 25, 2007, while the Board of Regents's motion to dismiss was still pending, NABP, having obtained leave to do so, filed an amended complaint, which added as defendants the Members and the University Officials in their official capacities.⁹ The amended complaint also added as a defendant Henry H. Cobb III, who, like Warren, was sued in his individual capacity. The amended complaint sought damages and injunctive relief. Counts II and III asserted the same claims as did the initial complaint.¹⁰ Count I, however, added two new claims at issue in this appeal. The amended Count I again sought damages against all defendants for copyright infringement under the Copyright Act.¹¹ The first new claim sought an injunction against the Members and the University Officials under Ex parte Young, 209 U.S. 123, 28 S.Ct. 441, 52 L.Ed. 714 (1908), barring them from further copyright infringement.

Count I also sought damages against all defendants under the Copyright Act, but under a new and separate theory to overcome the defendants' assertion of sovereign immunity. NABP...