Chavez v. Arte Publico Press, 93-2881

Citation204 F.3d 601
Decision Date18 February 2000
Docket NumberNo. 93-2881,93-2881
Parties(5th Cir. 2000) DENISE CHAVEZ,Plaintiff-Appellee, v. ARTE PUBLICO PRESS, et al., Defendants-Appellants
CourtUnited States Courts of Appeals. United States Court of Appeals (5th Circuit)

Appeal from the United States District Court for the Southern District of Texas

Before KING, Chief Judge, JONES and EMILIO M. GARZA, Circuit Judges.

EDITH H. JONES, Circuit Judge:

This Copyright/Lanham Act case has once again been remanded, this time by this Court sitting en banc, for reconsideration in light of the Supreme Court's decisions in Florida Prepaid Postsecondary Educ. Expense Bd. v. College Savings Bank, 527 U.S. 627, 119 S.Ct. 2199, 144 L.E.d.2d 575 (1999) and College Savings Bank v. Florida Prepaid Postsecondary Educ. Expense Bd., 527 U.S. 666, 119 S.Ct. 221 119 S.Ct. 2219, 144 L.Ed.2d 605 (1999). The issue is whether Congress properly exercised its authority to subject states to suit in federal court for violation of those statutes. See 15 U.S.C. 1122; 17 U.S.C. 501, 511. Plaintiff Chavez asserts that the University of Houston infringed her copyright by continuing to publish her book without her consent and violated the Lanham Act by naming her, also without her permission, as the selector of plays in another book it published. The University of Houston contends that because it enjoys immunity from unconsented-to suit in federal court under the Eleventh Amendment, the case must be dismissed.Once again, we agree with the University.1

Abrogation of a state's Eleventh Amendment immunity turns on an express statement of intent by Congress and a constitutionally valid exercise of power. See Seminole Tribe of Fla. v. Florida, 517 U.S. 44, 55, 116 S.Ct. 1114, 1123, 134 L.Ed.2d 252 (1996). Congress amended both the Lanham Act and the Copyright Act and explicitly required states to submit to suit in federal court for violation of their provisions; 2 thus, the express statement requirement is fulfilled. The remaining question, to be considered in the light of College Savings, Florida Prepaid, and Kimel v. Fla. Bd. of Regents, ___ U.S. ___, 120 S.Ct. 631, 145 L.Ed.2d 522, (2000), is whether Congress had authority to abrogate state sovereign immunity in the Acts.

The first opinion in this case followed the Parden theory that states can impliedly waive their sovereign immunity and on that basis, held that the University could be sued in federal court for violating the two statutes. See Chavez v. Arte Publico Press, 59 F.3d 539, 547 (5th Cir. 1995) [hereinafter Chavez I]; see Parden v. Terminal Ry. Of Ala. State Docks Dep't, 377 U.S. 184, 84 S.Ct. 1207, 12 L.Ed.2d 233 (1964).

After the Supreme Court remanded for reconsideration in light of Seminole, we concluded that Parden's implied waiver theory was no longer viable. See Chavez v. Arte Publico Press, 157 F.3d 282, 287 (5th Cir. 1998) [hereinafter Chavez II]. Taking Seminole in conjunction with City of Boerne v. Flores, 521 U.S. 507, 117 S.Ct. 2157, 138 L.Ed.2d 624, we held that the Copyright Remedy Clarification Act (hereinafter CRCA) and the Trademark Remedy Clarification Act (hereinafter TRCA) were invalid exercises of Article I legislative power. Further, upholding the statutes as valid exercises of legislative power pursuant to section 5 of the Fourteenth Amendment would be an impermissible end-run around Seminole. Id. Chavez II was vacated by the court's vote for en banc reconsideration, but the case was remanded to this panel after College Savings and Florida Prepaid were decided.

Chavez and the amici who have filed supplemental post-remand briefs contend that the CRCA validly enforces the due process clause of the Fourteenth Amendment. And for the first time in this case, they defend the CRCA as a means of enforcing the privileges or immunities clause of the Fourteenth Amendment. 3 While Chavez's arguments are interesting, we again find them unpersuasive.4

A) Section 5 of the Fourteenth Amendment

Chavez and amici justify the CRCA's abrogation of state Eleventh Amendment immunity under section 5 of the Fourteenth Amendment, because Congress acted to prevent states from depriving copyright holders of their property without due process of law. They contend that the legislative history demonstrates that the waiver effected by the CRCA is proportional to its remedial object.5

The University of Houston preliminarily counters that since Congress relied only on the copyright clause of Article I in enacting the CRCA, we may not consider another ground of constitutionality -- the Fourteenth Amendment -- that Congress did not invoke. The most recent Supreme Court authority supports this position. In a footnote in Florida Prepaid, the Court declined to consider the Just Compensation clause as a basis for the PRCA, stating:

There is no suggestion in the language of the statute itself, or in the House or Senate Reports of the bill which became the statute, that Congress had in mind the Just Compensation Clause of the Fifth Amendment. Since Congress was so explicit about invoking its authority under Article I and its authority to prevent a State from depriving a person of property without due process of law under the Fourteenth Amendment, we think this omission precludes consideration of the Just Compensation Clause as a basis for the Patent Remedy Act.

Florida Prepaid, 119 S.Ct. at 2208 n.7. Earlier Supreme Court jurisprudence was unsettled on this point. Proceeding chronologically, the Court first held that the "constitutionality of action taken by Congress does not depend on recitals of the power which it undertakes to exercise." Woods v. Cloyd W. Miller Co., 333 U.S. 138, 144, 68 S.Ct. 421, 424, 92 L.Ed. 596 (1948). In its next brush with the issue, the Court held that "because [legislation to enforce the Fourteenth Amendment] imposes congressional power on a state involuntarily, and because it often intrudes on traditional state authority, we should not quickly attribute to Congress an unstated intent to act under its authority to enforce the Fourteenth Amendment." Pennhurst State School v. Halderman, 451 U.S. 1, 15, 101 S.Ct. 1531, 1539, 67 L.Ed.2d 694 (1981). Following Pennhurst, however, the Court appeared to retrench when it stated it must "be able to discern some legislative purpose or factual predicate that supports the exercise of [Fourteenth Amendment] power. That does not mean, however, that Congress need anywhere recite the words 'section 5' or 'Fourteenth Amendment' or 'equal protection.'" EEOC v. Wyoming, 460 U.S. 226, 243 n.18, 103 S.Ct. 1054, 1064 n.18, 75 L.Ed.2d 18 (1983). Even if Florida Prepaid, a majority opinion, does not rule out Chavez's reliance on the implicit authority of the Fourteenth Amendment, we hold on the merits that the CRCA did not properly enforce the due process clause.

Congress can abrogate the states' sovereign immunity when acting to enforce constitutional rights pursuant to section 5 of the Fourteenth Amendment. See Seminole, 116 S.Ct. at 1128 (citing Fitzpatrick v. Bitzer, 427 U.S. 445, 96 S.Ct. 2666, 49 L.Ed.2d 614 (1976)). City of Boerne, however, states that when Congress legislates pursuant to section 5, "there must be a congruence and proportionality between the injury to be prevented or remedied and the means adopted to that end." City of Boerne, 117 S.Ct. at 2164. Florida Prepaid applied the principles of City of Boerne to the PRCA, a statute analogous to the CRCA in the patent field. The analytical framework that Florida Prepaid sets forth requires examination of three aspects of the legislation: 1) the nature of the injury to be remedied; 2) Congress's consideration of the adequacy of state remedies to redress the injury; and 3) the coverage of the legislation. This framework was recently reconfirmed by the Court in Kimel, supra.

The first consideration is the nature of the injury to be remedied and whether the state's conduct evinced a pattern of constitutional violations. See Florida Prepaid, 119 S.Ct. at 2207. The underlying conduct at issue here is state infringement of copyrights, rather than patents, and the "constitutional injury" consists of possibly unremedied, or uncompensated, violation of copyrights by states. See H.R. Rep. No. 101-282, pt.1, at 3 (1989), reprinted in 1990 U.S.C.C.A.N. 3949, 3951 [hereinafter H.R. Rep.]. Such infringements, it is contended, would "take" the copyright owners' property without due process of law.6

The Supreme Court concluded in Florida Prepaid that "Congress identified no pattern of patent infringement by the States, let alone a pattern of constitutional violations." Florida Prepaid, 119 S.Ct. at 2207. Although the legislative history for the CRCA documents a few more instances of copyright infringement than the PRCA legislative history did of patent violations, the CRCA's history exhibits similar deficiencies. For example, testimony before the House Subcommittee in favor of the CRCA acknowledged that "the States are not going to get involved in wholesale violation of the copyright laws." Copyright Remedy Clarification Act and Copyright Office Report on Copyright Liability of States: Hearings Before the Subcomm. on Courts, Intellectual Property, and the Administration of Justice of the House Comm. on the Judiciary, 101st Cong. 53 (1989) [hereinafter House Hearings] (statement of Ralph Oman, Register of Copyrights, Library of Congress). 7 In addition, the bill's sponsor stated that "thus far there have not been any significant number of wholesale takings of copyright rights by States or State entities." Id., at 48 (statement of Rep. Kastenmeier).

At the request of Congress, the Copyright Office reported on the relation between the states' copyright liability and the Eleventh Amendment; in that report, no more than seven incidents of State copyright infringement enabled by the Eleventh Amendment were documented. Register of Copyrights, Copyright Liability of States and the Eleventh...

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