Lane v. First Nat. Bank of Boston

• Decision Date: 19 May 1988
• Docket Number: Civ. A. No. 85-0520-H.
• Citation: 687 F. Supp. 11
• Parties: Joan F. LANE d/b/a Lane & Co., Plaintiff, v. The FIRST NATIONAL BANK OF BOSTON, et al, Defendants.
• Court: U.S. District Court — District of Massachusetts

687 F. Supp. 11

Joan F. LANE d/b/a Lane & Co., Plaintiff, v. The FIRST NATIONAL BANK OF BOSTON, et al, Defendants.

Civ. A. No. 85-0520-H.

United States District Court, D. Massachusetts.

May 19, 1988.

William F. Spallina, Newton, Mass., for plaintiff.

Judith Fabricant, Asst. Atty. Gen. and John M. Skenyon, Fish & Richardson, Boston, Mass., for defendants.

MEMORANDUM AND ORDER

HARRINGTON, District Judge.

I. PROCEDURE

These motions arise from a case in which plaintiff, Joan Lane, charges the First National Bank of Boston ("Bank") and the Commonwealth of Massachusetts ("Commonwealth") with, inter alia, violations of the Copyright Act, 17 U.S.C. §§ 101, et seq. In April of 1985, plaintiff amended her complaint to add claims against the Bank for misappropriation of trade secrets, and against the Commonwealth for civil rights violations, and injunctive relief. In June, 1985, plaintiff added as defendants the Department of Revenue ("the Department"), the Bureau of Accounts and three individuals who are employed by the Commonwealth.

On January 2, 1986, Judge Tauro granted the state defendants' motion to dismiss civil rights and pendent trade secrets claims, but denied the motion as to the copyright claim. The Commonwealth filed a motion for summary judgment, based in part on the ground that the copyright claim was barred by the Eleventh Amendment. Judge Tauro denied this motion orally during a pretrial conference. State defendants now seek reconsideration of their motion to dismiss, pursuant to Fed.R.Civ.P. 12(h)(3). based on Eleventh Amendment immunity.¹

II. STATEMENT OF THE CASE

Lane collects public financial information, compiles data bases, and sells computerized compilations to the public in various forms, including reports, computer tapes, and telephone lined access tie-ins to said computerized data bases. Sometime in October, 1981, Lane sold a tape of financial information taken from the Massachusetts Schedule A form. This is a Massachusetts form which every city and town must complete and submit annually to the state. Town accountants customarily add handwritten information to existing categories of Schedule A, to describe the flow of revenues and expenditures. This information is commonly referred to as "adds"; and Lane included this information from Schedule A forms in her compilations. Lane created this data base, known as "Schedule A", which contained all public financial information from Commonwealth cities and towns.

Lane contends that the Bank published a printout from the Schedule A data base of 1980 information, and without her authorization, delivered the printout to Harvey Beth, then Chief of the Bureau of Accounts at the Department of Revenue. Lane claims that the state defendants infringed on her copyright in the printout of the data base by incorporating "similar expressions of ideas regarding various entries for revenues and expenditures"; and by infringing upon the "arrangements and descriptions of the entries regarding revenues and expenditures as devised and created by the plaintiff and employed by her in Format 3".

Lane revised the Schedule A data into a more consistent format and created a work entitled "Format 3, Sources and Uses", which she published in a booklet. The booklet explained the Schedule A format and it contained financial information from the towns and cities, on a standardized form developed by her. Sometime after the booklet was published in December, 1982, Lane gave Harvey Beth a copy.

Lane claims the defendants infringed on her copyright in Format 3 by incorporating "similar expressions of ideas regarding various entries for revenue and expenditures, and by infringing upon the arrangements and descriptions of the entries regarding revenues and expenditures" in the revised Schedule A, its accounting system and its Schedule A data base. Lane further alleges the Commonwealth devised a computer program and a Schedule A substantially similar to hers, based on infringement of her copyrighted works.

III. RECONSIDERATION

The court first acknowledges its deference to Magistrate Alexander and Judge Tauro who previously denied defendants' motion to dismiss and their motion for summary judgment, based on Eleventh Amendment immunity from suit. The general rule is that one federal district judge should not overrule or reconsider a decision or order of another federal district judge in the same case unless there are good reasons to do so. See Brady v. Transworld Airlines, Inc., 167 F.Supp. 469 (D.Del. 1958), aff'd. 401 F.2d 87 (3d Cir.1968) (court permitted reargument of matters decided by a retired judge to examine the impact of a recent Supreme Court decision on the issues in the instant case). Annotation, Propriety of Federal District Judge's Overruling or Reconsidering Decision or Order Previously Made in the Same Case By Another District Judge, 20 A.L.R.Fed. 13, 22 (1974).

In this case, the 1985 Supreme Court decision of Atascadero State Hospital v. Scanlon, 473 U.S. 234, 105 S.Ct. 3142, 87 L.Ed.2d 171, reh'g. denied, 473 U.S. 926, 106 S.Ct. 18, 87 L.Ed.2d 696 (1985), and the very recent First Circuit decision of WJM, Inc. v. Massachusetts Department of Public Welfare, 840 F.2d 996 (1st Cir.1988), were not considered by the Court in the defendants' previous motions. This Court grants reconsideration of defendants' motion to dismiss, pursuant to Fed.R.Civ.P. 12(h)(3), on the grounds that these cases, in addition to others discussed below, demonstrate that the Eleventh Amendment bars plaintiff's action for copyright infringement against the Commonwealth, the Department of Revenue, the Bureau of Accounts, and the three nominal defendants in their official capacities.

IV. ELEVENTH AMENDMENT

Eleventh Amendment² immunity from suit in federal court is a jurisdictional bar to an action. See Welch v. State Department of Highways & Public Transportation, ___ U.S. ___, 107 S.Ct. 2941, 2947, n. 6, 97 L.Ed.2d 389 (1987), (quoting Edelman v. Jordan, 415 U.S. 651, 94 S.Ct. 1347, 39 L.Ed.2d 662 (1974)). Mills Music v. Arizona, 591 F.2d 1278 (9th Cir.1979), is the leading appellate decision which directly addresses whether the Eleventh Amendment is a jurisdictional bar to a suit against the state, under the Copyright statute. That case, which was decided before Atascadero and WJM, held that the Eleventh Amendment was not a bar to such a suit, 591 F.2d at 1284-85, and it was the basis on which this motion was denied previously. Examination of the effect of the Eleventh Amendment upon suits against states for copyright infringement, based on the Atascadero decision, however, reveals that Mills Music is no longer controlling law.

Atascadero State Hospital v. Scanlon is a 1985 five to four decision by the Supreme Court, which addressed the Eleventh Amendment in a lengthy opinion and a strong dissent. It held that when Congress abrogates Eleventh Amendment immunity, it "must express its intention ... in unmistakable language in the statute itself." 473 U.S. at 243, 105 S.Ct. at 3148.³ Atascadero held that the words "any recipient" were insufficient to subject the State of California to suit under section 504 of the Rehabilitation Act, 29 U.S.C. § 794. The Court held that Congress could not abrogate the State of California's immunity from suit in federal court, for violations of section 504 of the Rehabilitation Act, despite the undisputed fact that California was a recipient of such funds. Id. at 245-46, 105 S.Ct. at 3149-50.

Cases in the Ninth Circuit after Atascadero acknowledge its importance, and the Court of Appeals which decided Mills Music has referred to the impact of Atascadero upon the interpretation of statutory language. See Doe by Gonzales v. Maher, 793 F.2d 1470, 1493 (9th Cir.1986), judgment aff'd. as modified, sub nom. Honig v. Doe, ___ U.S. ___, 108 S.Ct. 592, 98 L.Ed.2d 686 (1988). District courts which have considered the effect of Atascadero upon the Mills Music decision agree that Mills Music is no longer good law. See BV Engineering v. University of California Los Angeles, 657 F.Supp. 1246, 1249 (C.D. Cal.1987), appeal pending; Woelffer v. Happy States of America, 626 F.Supp. 499, 505, n. 9 (E.D.Ill.1985); Mihalek Corp. v. State of Michigan, 595 F.Supp. 903 (E.D. Mich.1984) (appealed on other grounds), 814 F.2d 290 (6th Cir.), cert. denied, ___ U.S. ___, 108 S.Ct. 503, 98 L.Ed.2d 502 (1987), reh'g. denied, ___ U.S. ___, 108 S.Ct. 1065, 98 L.Ed.2d 1027 (1988).

Within our own circuit, the Court of Appeals has also specifically questioned the effect of Atascadero upon Mills Music. There is some doubt whether Mills Music is good law, however, as it was decided prior to Atascadero, where the Supreme Court ruled that a congressional intention to abolish the States' immunity must be expressed in clear, unequivocal language. WJM, Inc. v. Massachusetts Dept. of Public Welfare, 840 F.2d 996, 1002, n. 7 (1988). Applying the logic of Atascadero to the Copyright Act, this Court rules that the words "anyone who violates any of the exclusive rights of the copyright owner", 17 U.S.C. § 501, are insufficient to include the Commonwealth. These words fail to provide unmistakable language required by Atascadero, which is sufficient to abrogate Eleventh Amendment immunity.

The Eleventh Amendment confers immunity from suit upon state officials when "the state is the real substantial party in interest," that is, when "the judgment sought would expend itself on the public treasury ..., or interfere with the public administration...." Pennhurst State School and Hospital v. Halderman, 465 U.S. 89, 101-02, n. 11, 104 S.Ct. 900, 908 n. 11, 79 L.Ed.2d 67 (1984) (Pennhurst II), (quoting Dugan v. Rank, 372 U.S. 609, 620, 83 S.Ct. 999, 1006, 10 L.Ed.2d 15 (1963)). See also, Kentucky v. Graham, 473 U.S. 159, 166-67, 105 S.Ct. 3099, 3105-06, 87 L.Ed.2d 114 (1985). The Eleventh Amendment is no defense to a charge against an official in his personal capacity, however. Id. An award of...