BV Engineering v. University of California, Los Angeles

Decision Date03 October 1988
Docket NumberNo. 87-5920,87-5920
Citation858 F.2d 1394,8 USPQ2d 1421
Parties, 1988 Copr.L.Dec. P 26,334, 49 Ed. Law Rep. 522, 8 U.S.P.Q.2d 1421 BV ENGINEERING, Plaintiff-Appellant, v. UNIVERSITY OF CALIFORNIA, LOS ANGELES, Defendant-Appellee.
CourtU.S. Court of Appeals — Ninth Circuit

Michael A. Ladra, Nina F. Locker, Leo P. Cunningham, Wilson, Sonsini, Goodrich & Rosati, Palo Alto, Cal., for plaintiff-appellant.

James E. Holst, George L. Marchand, Allen B. Wagner, University of California, Berkeley, Cal., for defendant-appellee.

Peter L. Felcher, Steven B. Rosenfeld, Marjorie L. Van Dercook, Paul, Weiss, Rifkind, Wharton & Garrison, New York City, Shirley M. Hufstedler, Hufstedler, Miller, Carlson & Beardsley, Los Angeles, Cal., Michael A. Cardozo, Proskauer, Rose, Goetz & Mendelsohn, New York City, for amici curiae.

Appeal from the United States District Court for the Central District of California.

Before PREGERSON, WIGGINS and BRUNETTI, Circuit Judges.

PREGERSON, Circuit Judge:

BV Engineering sued the University of California, Los Angeles for copyright infringement. The district court granted summary judgment against BV Engineering on the ground that the eleventh amendment bars actions against the University of California under the Copyright Act of 1976. We affirm.

I

BV Engineering ("BV") creates and sells computer programs. In 1986, the University of California, Los Angeles ("the University") purchased one copy each of seven copyrighted computer programs sold by BV, with the accompanying user manuals. The University then made three copies of each program, and ten copies of each user manual.

In July 1986, BV commenced this action against the University. BV asserted various causes of action, including one for copyright infringement under section 501 of the Copyright Act of 1976, 17 U.S.C. Secs. 101-810 (1982). The district court dismissed with prejudice all claims other than the claim for copyright infringement. On April 17, 1987, the district court granted summary judgment for the University on the ground that the eleventh amendment barred BV's copyright infringement action against the University. BV Engineering v. University of California, Los Angeles, 657 F.Supp. 1246, 1250-51 (C.D.Cal.1987). Because the material facts are undisputed, we review only the legal question whether the eleventh amendment immunizes the University of California from suit under the Copyright Act of 1976.

II

Whether a state is immune from suit under the eleventh amendment is a question of law, which we review de novo. See, e.g., Charley's Taxi Radio Dispatch Corp. v. SIDA, 810 F.2d 869, 873 & n. 2 (9th Cir.1987).

III

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." U.S. Const. amend. XI. Although the amendment does not by its terms prohibit an action against a state by one of the state's own citizens, the Supreme Court has recognized such a prohibition. See Welch v. State Dep't of Highways & Public Transp., --- U.S. ----, 107 S.Ct. 2941, 2945, 97 L.Ed.2d 389 (1987) (plurality) (citing Hans v. Louisiana, 134 U.S. 1, 10, 10 S.Ct. 504, 505, 33 L.Ed. 842 (1890)).

"[T]he University of California and the Board of Regents are considered to be instrumentalities of the state," Jackson v. Hayakawa, 682 F.2d 1344, 1350 (9th Cir.1982), and therefore enjoy the same immunity as the state of California.

There are two circumstances under which the eleventh amendment does not bar an action for damages against a State. First, a state may waive its immunity and consent to be sued in federal court. Welch, 107 S.Ct. at 2945. Second, Congress may, when acting pursuant to certain powers, create a cause of action for damages against an unconsenting state. Id. at 2946. We address these exceptions in turn.

IV

We may find a waiver of eleventh amendment immunity only "where (1) the state expressly consents; (2) a state statute or constitution so provides; or (3) Congress clearly intended to condition the state's participation in a program or activity on the state's waiver of immunity." Collins v. Alaska, 823 F.2d 329, 331-32 (9th Cir.1987) (emphasis added).

It is conceded that California has not expressly consented to suit in federal court. Amici argue, however, that California's conduct in the copyright field demonstrates an intent to subject itself to the federal copyright laws. They point to certain California statutes that recognize an obligation to pay royalties on copyrights. See, e.g., Cal.Educ.Code Secs. 60289 (West 1978) (state must approve amount of royalty for copyrighted material), 60291 (West Supp.1987) (in fixing cost of books, state includes cost of royalty for copyrighted material). At most, however, California's conduct would amount to implied consent to be sued in federal court. Under the first prong of Collins, this is not enough. See also Richard Anderson Photography v. Brown, 852 F.2d 114, 120-22 (4th Cir.1988) (state does not waive eleventh amendment immunity merely by participating in federal copyright scheme).

Nor is there any waiver under prong two of Collins. It is true that California has waived its sovereign immunity for tort actions. See Cal.Gov't Code Sec. 945 (West 1980) ("A public entity may sue and be sued."); see also Muskopf v. Corning Hospital Dist., 55 Cal.2d 211, 11 Cal.Rptr. 89, 359 P.2d 457 (1961) (abolishing governmental immunity from tort liability). This waiver does not, however, constitute a waiver of eleventh amendment immunity. "[F]or a state statute or constitutional provision to constitute a waiver of eleventh amendment immunity, it must specify the State's intention to subject itself to suit in federal court." Atascadero State Hosp. v. Scanlon, 473 U.S. 234, 241, 105 S.Ct. 3142, 3146-47, 87 L.Ed.2d 171 (1985), (emphasis in original). A state's waiver of sovereign immunity in its own courts does not effect a waiver of its eleventh amendment immunity in the federal courts. Welch, 107 S.Ct. at 2946.

Finally, there is no waiver under the third prong of Collins. We discern no indication in the Copyright Act of 1976 that Congress intended to condition the states' participation in the national copyright scheme on a waiver of immunity. See Richard Anderson Photography, at 120-22 (reaching the same conclusion).

V And

It is well established that Congress has the power to abrogate the states' eleventh amendment immunity in statutes enacted under section 5 of the fourteenth amendment. See, e.g., Welch, 107 S.Ct. at 2946; Collins v. Alaska, 823 F.2d 329, 332 (9th Cir.1987) ("It is beyond peradventure that, whatever power the Eleventh Amendment withdrew from the federal courts, Congress has the authority under section five of the Fourteenth Amendment to restore it.").

The Copyright Act of 1976, however, was enacted pursuant to the Copyright and Patent Clause, U.S. Const. Art. I, Sec. 8, cl. 8. The Supreme Court has reserved judgment on the question whether Congress may abrogate the states' eleventh amendment immunity pursuant to an Article I power. See Welch, 107 S.Ct. at 2946 ("assum[ing], without deciding or intimating a view of the question, that the authority of Congress to subject unconsenting States to suit in federal court is not confined to section 5 of the Fourteenth Amendment"); County of Oneida, New York v. Oneida Indian Nation, 470 U.S. 226, 252, 105 S.Ct. 1245, 1260-61, 84 L.Ed.2d 169 (1985) (assuming, without deciding, that Congress may abrogate eleventh amendment immunity when it acts pursuant to the Commerce Clause, U.S. Const. Art. I, Sec. 8, cl. 3).

Several other circuits have held that Congress does have the power to abrogate eleventh amendment immunity when it acts pursuant to Article I. See United States v. Union Gas Co., 832 F.2d 1343, 1350-56 (3d Cir.1987) (Commerce Clause, U.S. Const. Art. I, Sec. 8, cl. 3), cert. granted, --- U.S. ----, 108 S.Ct. 1219, 99 L.Ed.2d 420 (1988); In re McVey Trucking, Inc., 812 F.2d 311, 314-23 (7th Cir.) (Bankruptcy Clause, U.S. Const. Art. I, Sec. 8, cl. 4), cert. denied, --- U.S. ----, 108 S.Ct. 227, 98 L.Ed.2d 186 (1987); Peel v. Florida Dept. of Transportation, 600 F.2d 1070, 1080-81 (5th Cir.1979) (War Power Clause, U.S. Const. Art. I, Sec. 8, cl. 11).

Commentators agree:

Article I envisions that the national government will have exclusive power to regulate certain subjects when, in the clearly expressed opinion of Congress, such regulation would serve the nation's interests. To the extent that sovereign immunity would free a state from such national controls, that immunity is inconsistent with the constitutional plan.

Tribe, Intergovernmental Immunities in Litigation, Taxation, and Regulation: Separation of Powers Issues in Controversies About Federalism, 89 Harv.L.Rev. 682, 694-95 (1976); see also id. at 693 ("Nothing in the language or the history of the eleventh amendment suggests that it must be construed to limit congressional power under the commerce clause or under any other head of affirmative legislative authority."); cf. Nowak, The Scope of Congressional Power to Create Causes of Action Against State Governments and the History of the Eleventh and Fourteenth Amendments, 75 Colum.L.Rev. 1413, 1469 (1975) ("When the Court finally determines the scope of congressional power to create federal damage actions against state governments, it will further define the nature of federal-state relationships. If it imposes restrictions on this power.... [it] will have to attempt to find a principled basis for restricting the fulfillment of national needs which call for the effective regulation of state activities when none exists.") (footnote omitted).

A decision on this issue may be forthcoming. The Supreme Court recently granted certiorari in a case that endorsed the view that Co...

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