Can. Hockey LLC v. Tex. A&M Univ. Athletic Dep't

Decision Date04 September 2020
Docket NumberCivil Action No. 4:17-CV-181
Citation484 F.Supp.3d 448
Parties CANADA HOCKEY LLC; dba Epic Sports, et al., Plaintiffs, v. TEXAS A&M UNIVERSITY ATHLETIC DEPARTMENT, et al., Defendants.
CourtU.S. District Court — Southern District of Texas

J. Matthew Williams, Mitchell Silherberg et al., Washington, DC, Kenneth E. McKay, Baker Donelson et al., Joe W. Redden, Jr., Owen J. McGovern, Beck and Redden LLP, Houston, TX, Robert H. Rotstein, Mitchell Silberberg & Knupp LLP, Los Angeles, CA, for Plaintiff.

H. Melissa Mather, Joshua Andrew Eames-Cepero, Lea Norkus Brigtsen, Office of the Attorney General, Julie A. Ford, George Brothers Kincaid Horton LLP, Austin, TX, for Defendants.


Andrew S. Hanen, United States District Judge Plaintiffs Michael J. Bynum and Canada Hockey LLC (collectively, "Plaintiffs") filed this case in January of 2017. (Doc. No. 1). They sought monetary damages against the Texas A&M University Athletic Department (the "Athletic Department"), the Texas A&M University 12th Man Foundation (the "Foundation"), Brad Marquardt ("Marquardt"), Alan Cannon ("Cannon"), and Lane Stephenson ("Stephenson") (collectively, "Defendants"). (Doc. No. 15). Plaintiffs' amended complaint pleaded claims for: (1) copyright infringement against all Defendants except the Foundation; (2) contributory copyright infringement against all Defendants; (3) vicarious copyright infringement against the Foundation and the Athletic Department; (4) violations of the Digital Millennium Copyright Act, 17 U.S.C. § 1202 ("DMCA") against Marquardt and the Athletic Department; (5) takings claims under the Constitution of the State of Texas against the Athletic Department; and (6) takings claims under the Constitution of the United States against the Athletic Department. (Id. at 24–32).

In March of 2019, the Court granted Defendants' motions to dismiss on all claims, except for Plaintiffs' claims against Marquardt. (Doc. No. 96). Nearly four months later, Plaintiffs filed a motion for reconsideration. (Doc. No. 102, the "First Motion to Reconsider"). In that motion, Plaintiffs asked the Court to reinstate the claims for copyright and takings under the Constitution of the United States against Texas A&M University ("A&M" or the "University") (the "correct party" substitute for the Athletic Department). (See Doc. No. 96 at 14).

The Court stayed the case until the Supreme Court of the United States decided Allen v. Cooper , ––– U.S. ––––, 140 S. Ct. 994, 206 L.Ed.2d 291 (2020), which addressed the issue of whether the Copyright Remedy Clarification Act of 1990 ("CRCA") validly abrogated the Eleventh Amendment for copyright infringement claims. (Doc. No. 111). In a unanimous decision, the Supreme Court held that the CRCA's purported abrogation of sovereign immunity was constitutionally invalid. See Allen , 140 S. Ct. at 1007. That is the same conclusion this Court reached in the earlier dismissal order (Doc. No. 96 at 17–18). Thus, the Court lifted the stay and denied Plaintiffs' First Motion to Reconsider as to their copyright claims against A&M (through the Athletic Department). (Doc. No. 121). The Court, however, ordered the parties to file briefs concerning whether the Eleventh Amendment also barred Plaintiffs' federal takings claims. (See id. ). The parties complied. (Doc. Nos. 125 and 126).

Plaintiffs then filed a motion for the Court to reconsider its partial denial of the First Motion to Reconsider. (Doc. No. 128, the "Second Motion to Reconsider"). The University filed a response in opposition (Doc. No. 138) and Plaintiffs filed a reply (Doc. No. 142). Plaintiffs also filed a motion for reconsideration and/or motion for leave to file a second amended complaint. (Doc. No. 131, the "Motion for Leave to Amend"). Defendants filed responses in opposition (Doc. Nos. 141 and 144), Plaintiffs filed replies (Doc. No. 145 and 146), and the Foundation filed a sur-reply (Doc. No. 147).

Finally, in the Foundation's response in opposition to Plaintiffs' Motion for Leave to Amend, it filed a cross motion for the entry of final judgment under Rule 54(b). (Doc. No. 141, the "Cross Motion"). In response, Plaintiffs filed a brief in opposition (Doc. No. 149), the Foundation filed a reply (Doc. No. 156), and Plaintiffs filed a sur-reply (Doc. No. 159).

Having carefully considered all of the arguments in the various briefs filed concerning the motions identified above, the applicable law, and the record in this case, the Court hereby denies the First Motion to Reconsider, the Second Motion to Reconsider, the Motion for Leave to Amend. The Court also grants the Cross Motion. Lastly, the Court severs Athletic Department, the Foundation, Cannon, and Stephenson from this case, and enters final judgment under Rule 54(b) against Plaintiffs' claims against these defendants.1

I. Summary of the Amended Complaint (Doc. No. 15)

This Court's prior order covering the motions to dismiss stated, in detail, the factual allegations that Plaintiffs pleaded in the amended complaint against the Defendants. (See Doc. No. 96). Accordingly, it only provides a selective summary here.

Bynum allegedly spent more than a decade researching E. King Gill and the history of the A&M "12th Man" story. (Doc. No. 15 at 9). Eventually, Bynum hired Whit Canning to produce a biography about Gill (the "Gill Biography") that Bynum planned to use as the opening chapter to his forthcoming 12th Man book. (Id. ). Bynum allegedly owns the copyright to the Gill Biography.

In mid-2010, Bynum allegedly emailed Marquardt asking for assistance locating additional photographs to include in the 12th Man book. (Id. ). Bynum's email included a PDF draft of the book that also contained copyright management information, including Bynum's name, the copyright date, and a warning against using or reproducing the work. (See id. at 10–12).

Beginning in January of 2014, A&M allegedly initiated a "campaign to promote its ongoing claim that it is the true owner of the [concept of the] ‘12th Man." (Id. at 14). Plaintiffs allege that, to further this campaign, the "Athletic Department and the Foundation directed staff at the ... Athletic Department, including at least Marquardt and Cannon, to find background information on Gill that could be used to promote the 12th Man story and solicit more donations." (Id. at 15). Around this time, Bynum learned that a "near verbatim copy" of the Gill Biography appeared as the feature story of the University's e-Newsletter, which included a hyperlink to a page on the Athletic Department's website displaying the infringing copy of Bynum's Gill Biography. (Id. at 16).

Moreover, Plaintiffs contend that, during this time period, Stephenson was in charge of the University's website and was responsible for the content in the e-Newsletter and the University's official Twitter account "@TAMU." (Id. at 5). Stephenson supposedly assisted Marquardt in distributing the allegedly infringing work by publishing it online and dispersing the hyperlink via email and Twitter. (See id. at 20–21).

II. Summary of the Court's Prior Dismissal Order (Doc. No. 96)

The Defendants filed motions to dismiss the amended complaint. (Doc. Nos. 33 and 34). The Court granted in-part and denied in-part the motions and dismissed all claims, except those asserted against Marquardt. (Doc. No. 96). First, the Court held that the Athletic Department "has no capacity to be sued," and that the "correct party" substitute for the Athletic Department is A&M. (Id. at 12–14). Since the University is an arm of the State of Texas, the Court proceeded to analyze issues of sovereign immunity. (Id. at 14). See also Eustice v. Tex. A & M Univ. , No. 4:15-cv-03180, 2016 WL 8710444, at *3 (S.D. Tex. Sept. 30, 2016) ("[ A & M ] is an arm of the state and, therefore, immune from suit."); see also TEX. EDUC. CODE § 86.02. The Court concluded that Congress had not abrogated state sovereign immunity for copyright causes of action. (Doc. No. 96 at 14–18). See also, e.g. , Chavez v. Arte Publico Press , 204 F.3d 601 (5th Cir. 2000). Consequently, the Court held that substitution of the University would be improper (or pointless) for the copyright claims. (Doc. No. 96 at 18).

The Court then turned to the state and federal takings claims pleaded against A&M—who, again, should have been the proper party as opposed to the Athletic Department. First, the Court found that the claims based upon the Texas Constitution are barred by the Eleventh Amendment. (Id. at 18 (citing Pennhurst State Sch. & Hosp. v. Halderman , 465 U.S. 89, 120, 104 S.Ct. 900, 79 L.Ed.2d 67 (1984)) ). The Court held that Plaintiffs' claims brought under the Constitution of the United States for monetary damages are also barred by the Eleventh Amendment.2 (Id. at 19 (first citing John G. & Marie Stella Kenedy Mem'l Found. v. Mauro , 21 F.3d 667, 674 (5th Cir. 1994)) ; and then citing McMurtray v. Holladay , 11 F.3d 499, 504 (5th Cir. 1993) ). Alternatively, the Court found that Plaintiffs failed to exhaust their state law remedies under Williamson County Regional Planning Com'n v. Hamilton Bank of Johnson City , 473 U.S. 172, 105 S.Ct. 3108, 87 L.Ed.2d 126 (1985), and that failure precluded the Court's entertaining those claims. (Id. at 19–21).

Next, the Court found that Plaintiffs did not plausibly plead claims against the Foundation for contributory infringement and vicarious infringement. (Id. at 21–23). It also granted Cannon's and Stephenson's motion to dismiss under qualified immunity; alternatively, the Court held that Plaintiffs had insufficiently pleaded those claims under Rule 12(b)(6). (Id. at 27–31). The Court, however, denied the motion to dismiss as to Plaintiffs' claims against Marquardt (Id. at 23–26).

The case was therefore dismissed as to the Athletic Department (or, more accurately, A&M), the Foundation, Cannon, and Stephenson. The case was to proceed as to Plaintiffs' claims against Marquardt.

III. Plaintiffs' First and Second Motion to Reconsider (Doc. Nos....

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