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

• Decision Date: 14 February 2022
• Docket Number: 20-20503
• Court: U.S. Court of Appeals — Fifth Circuit
• Parties: Canada Hockey, L.L.C., doing business as Epic Sports; Michael J. Bynum, Plaintiffs-Appellants, v. Texas A&M University Athletic Department; Alan Cannon; Lane Stephenson, in his individual capacity, Defendants-Appellees.

Canada Hockey, L.L.C., doing business as Epic Sports; Michael J. Bynum, Plaintiffs-Appellants, v. Texas A&M University Athletic Department; Alan Cannon; Lane Stephenson, in his individual capacity, Defendants-Appellees.

No. 20-20503

United States Court of Appeals, Fifth Circuit

February 14, 2022

Appeal from the United States District Court for the Southern District of Texas USDC No. 4:17-CV-181

Before Owen, Chief Judge, Smith and Graves, Circuit Judges.

ON PETITION FOR REHEARING

JAMES E. GRAVES, JR., CIRCUIT JUDGE ^[*]

IT IS ORDERED that the petition for rehearing is DENIED. The opinion, filed September 8, 2021, is WITHDRAWN, and the following is SUBSTITUTED:

Michael J. Bynum and his publishing company sued Texas A&M University and its employees after they published a part of Bynum's forthcoming book without permission. Relevant here, the district court dismissed all claims against Texas A&M on state sovereign immunity grounds and those against two Texas A&M employees for failure to state a claim. We AFFIRM.

I. Background

For purposes of this appeal, we accept the factual allegations stated in the complaint as true. See, e.g., Ashcroft v Iqbal, 556 U.S. 662, 678 (2009).

Michael J. Bynum is a sportswriter and editor that operates his own publishing company, Canada Hockey LLC d/b/a Epic Sports ("Epic Sports"). In 1980, Bynum became interested in the "12th Man" lore while working on his first book about Texas A&M University's (TAMU) football program. Plaintiffs describe the 12th Man story as follows:

The University's now famous 12th Man tradition was inspired by the actions of E. King Gill at the 1922 football game known as the "Dixie Classic." Gill, a squad player for A&M's football team, who was already training with the university's basketball team, was up in the press box watching his team face the then top-ranked Prayin' Colonels of Centre College, when he was waved down to the sideline before halftime to suit up in case his injured team ran out of reserve players. Gill stood on the sideline, ready to play, for the remainder of the game.

Gill's commitment to step up for his team when in need later became a legend that was passed down from generation to generation of Aggies. Today, the 12th Man tradition is a symbol of the Aggies' unity, loyalty, and willingness to serve when called upon to do so, and is woven into many aspects of life at A&M.

In 1990, TAMU registered "12th Man" as a trademark and has since aggressively enforced it.

Intrigued by the story, Bynum decided to write about Gill and his impact on TAMU's football program for a forthcoming book titled 12th Man. For many years, Bynum researched Gill and the 12th Man story, including reviewing primary documents, visiting relevant locations, and conducting interviews with personnel in TAMU's Athletic Department. The personnel included Brad Marquardt, an Associate Director of Media Relations, and Alan Cannon, an Assistant Athletic Director for Media Relations. Marquardt reported to Cannon and managed the Athletic Department's official Twitter account dedicated to its football program (@AggieFootball). Cannon handled media relations for all sports programs in the Athletic Department and managed the department's official website. Eventually, Bynum hired Whit Canning to write a short biography about Gill (the "Gill Biography") titled "An A&M Legend Comes to Life," which Bynum planned to use as the opening chapter of his book.

In June 2010, Bynum emailed Marquardt seeking photographs to include in his book, sending along a draft of the book in PDF form. In the email, Bynum specified that the PDF was "a draft version of the 12th Man Book" and "a work in progress . . . not in final form yet." The draft contained Bynum's name, copyright date, an indication that Epic Sports owned the copyright to the book, and a statement that "no part of the book may be reproduced or used in any form or by any means . . . without the permission of the publisher." The Gill Biography was the opening chapter of the book. Bynum continued to email Marquardt as late as December 2013, asking questions related to the book. Bynum planned to publish his 12th Man book in the fall of 2014.

In January 2014, TAMU's Athletic Department directed its staff to find background information on Gill that could be used to promote the 12th Man story and raise money. Marquardt directed his secretary to retype the Gill Biography that Bynum sent to Marquardt in 2010; remove any references to Bynum or Epic Sports; rewrite the byline to read "by Whit Canning, special to Texas A&M Athletics" to suggest that Canning was commissioned to write the Biography exclusively for the Athletic Department; and change the original title of the Biography from "An A&M Legend Comes to Life" to "The Original 12th Man." Marquardt provided the retyped Biography to his work colleagues, including Cannon and Lane Stephenson, the Director of News & Information Services at TAMU, for approval and publication. Stephenson was in charge of TAMU's official Twitter account (@TAMU) and "TAMU Times," which was TAMU's e-newsletter and website.

Soon after, the Athletic Department published the contents of the Gill Biography as an article on its website. Then, on January 19, 2014, both TAMU and its Athletic Department tweeted a link to the article on their respective Twitter accounts. The posts were retweeted and discussed by news sources. The article was also featured in TAMU Times.

On January 22, 2014, Bynum emailed Marquardt and another employee of the Athletic Department requesting immediate removal of the article. Several hours later, Marquardt responded that the article was no longer on the website, apologized for the "mix-up," and asked whether it would "be possible to post the story as an 'excerpt' to [his] book." He also stated: "I asked my secretary to key [the Biography] in for me which she did." Though the article was removed, it was shared by others and reposted on various online forums. The book remains unpublished.

In 2017, Bynum and Epic Sports filed suit against the TAMU Athletic Department, the TAMU 12th Man Foundation, ^[1] and employees of the Athletic Department. Relevant here, Plaintiffs assert the following claims: (1) direct copyright infringement under the Copyright Remedy Clarification Act (CRCA), 17 U.S.C. § 501, against the Athletic Department, Cannon, and Stephenson; (2) contributory copyright infringement against the same; (3) vicarious copyright infringement^[2] against the Athletic Department; (4) violation of the Digital Millennium Copyright Act (DMCA), 17 U.S.C. § 1202, against the Athletic Department; (5) violation of the Takings Clause of the Texas Constitution against the Athletic Department; and (6) violation of the Takings Clause of the U.S. Constitution against the Athletic Department.

TAMU, on behalf of the Athletic Department, moved to dismiss the claims for lack of jurisdiction on state sovereign immunity grounds under Federal Rule of Civil Procedure 12(b)(1). Cannon and Stephenson moved to dismiss the claims for failure to state a claim under Rule 12(b)(6) and on qualified immunity grounds. In March 2019, the district court dismissed those claims, but later stayed the case pending the Supreme Court's decision in Allen v. Cooper, 140 S.Ct. 994 (2020). In September 2020, after Allen was decided and additional briefing was submitted, the district court entered final judgment for TAMU, Cannon, and Stephenson. Plaintiffs appeal.

II. Standard of Review

"We review de novo a district court's grant of a Rule 12(b)(1) motion to dismiss for lack of subject matter jurisdiction because of state sovereign immunity." Meyers ex rel. Benzing v. Texas, 410 F.3d 235, 240 (5th Cir. 2005). A plaintiff bears the burden of proof that jurisdiction exists. Daniel v. Univ. of Tex. Sw. Med. Ctr., 960 F.3d 253, 256 (5th Cir. 2020). While legal conclusions are reviewed de novo, the district court's factual findings are reviewed for clear error. Kuwait Pearls Catering Co. v. Kellogg Brown & Root Servs., Inc., 853 F.3d 173, 178 (5th Cir. 2017).

We review de novo a district court's grant of a Rule 12(b)(6) motion to dismiss for failure to state a claim. Thurman v. Med. Transp. Mgmt., Inc., 982 F.3d 953, 955 (5th Cir. 2020). We accept all well-pled factual allegations as true, viewing them in the light most favorable to the plaintiff. Id.

III. State Sovereign Immunity

State sovereign immunity divests federal courts of jurisdiction over states and their agencies and instrumentalities, unless the state consents to suit or Congress has clearly and validly abrogated the state's sovereign immunity. See U.S. Const. amend. XI; Perez v. Region 20 Educ. Serv. Ctr., 307 F.3d 318, 326 (5th Cir. 2002). "The state need not be the named party in a federal lawsuit, for a state's Eleventh Amendment immunity extends to any state agency or entity deemed an 'alter ego' or 'arm' of the state." Id.^[3]TAMU is inarguably an arm of the state entitled to sovereign immunity. See U.S. Oil Recovery Site Potentially Responsible Parties Grp. v. R.R. Comm'n of Tex., 898 F.3d 497, 501 (5th Cir. 2018).

As noted above, a state's immunity from suit is not absolute. With respect to abrogation, a federal court may entertain a lawsuit against a nonconsenting state on two conditions: "First, Congress must have enacted 'unequivocal statutory language' abrogating the States' immunity from the suit. . . . And second, some constitutional provision must allow Congress to have thus encroached on the States' sovereignty. Not even the most crystalline abrogation can take effect unless it is 'a valid exercise of constitutional authority.'" Allen, 140 S.Ct. at 1000-01 (citations omitted).

IV. Claims Against TAMU

Appellants argue that the district court...