Lane v. First Nat. Bank of Boston

• Decision Date: 09 January 1989
• Docket Number: No. 88-1815,88-1815
• Citation: 871 F.2d 166
• Parties: , 1989 Copr.L.Dec. P 26,401, 10 U.S.P.Q.2d 1268 Joan F. LANE, d/b/a Lane & Co., Plaintiff, Appellant, v. The FIRST NATIONAL BANK OF BOSTON, et al., Defendants, Appellees. . Heard
• Court: U.S. Court of Appeals — First Circuit

Page 166

871 F.2d 166

57 USLW 2593, 1989 Copr.L.Dec. P 26,401,

10 U.S.P.Q.2d 1268

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

No. 88-1815.

United States Court of Appeals First Circuit.

Heard Jan. 9, 1989.

Decided March 22, 1989.

William F. Spallina, Watertown, Mass., for appellant.

Steven B. Rosenfeld with whom Peter L. Felcher, Jon D. Kaplon, Paul, Weiss, Rifkind, Wharton & Garrison, Bernard Korman, I. Fred Koenigsberg, Edward W. Chapin, Alan L. Shulman, Silverman & Shulman, P.C., Howard L. Wattenberg, Marshall, Morris, Glinert, Powell, Wattenberg & Perlstein, Alvin Deutsch and Linden & Deutsch, New York City, were on brief, for Nat. Music Publishers' Ass'n, Inc., American Soc. of Composers, Authors and Publishers, Broadcast Music, Inc., Music Publishers' Ass'n of the U.S. and The Songwriters Guild of America, amici curiae.

Lisa A. Levy, Asst. Atty. Gen., with whom James M. Shannon, Atty. Gen., Boston, Mass., was on brief for appellees the Com. of Massachusetts Dept. of Revenue, Harvey J. Beth, Edward J. Collins, Jr., and Roberta Heinzmann.

Before BOWNES and SELYA, Circuit Judges, and PETTINE, ^* Senior District Judge.

SELYA, Circuit Judge.

This appeal presents, face up and squarely, the vexing question of whether the Eleventh Amendment provides shelter to States in actions brought pursuant to the Copyright Act of 1976, as amended, 17 U.S.C. Secs. 101-810 (1982). For the reasons set forth herein, we conclude that it does.

I

Plaintiff-appellant Joan F. Lane brought suit in the federal district court against the Commonwealth of Massachusetts and divers others, ¹ charging copyright infringement. The Commonwealth, she said, had infringed on her copyrights in certain compilations of financial data. Plaintiff sought variegated relief, money damages included. After some backing and filling, the district court ruled that the Eleventh Amendment barred Lane's damage action against the Commonwealth. Lane v. First Nat'l Bank of Boston, 687 F.Supp. 11, 14-15, 17-18 (D.Mass.1988).

Plaintiff then asked that 28 U.S.C. Sec. 1292(b) be invoked and the district judge signed the requested certificate. ² Lane posed the question which she believed deserving of interlocutory review as follows:

... [D]id the district court err by dismissing a copyright claim against a state and its agencies on the basis of 11th Amendment immunity even though the U.S. Supreme Court in Atascadero State Hospital v. Scanlon, held that 11th Amendment immunity is not available if a reading of the statute conferring jurisdiction upon the federal court shows "by such overwhelming implication from the text as will leave no room for any other reasonable construction" that Congress has abrogated such immunity and the result of the application of 11th Amendment Immunity ... is that a copyright infringement action cannot be maintained against a state anywhere, leaving states free to infringe on copyrights?

Appellant's Petition for Sec. 1292(b) Consideration (June 30, 1988) at 2-3 (citations omitted). Because we agreed that the issue was "sufficiently novel and important," In re San Juan Dupont Plaza Hotel Fire Litigation, 859 F.2d 1007, 1010 n. 1 (1st Cir.1988), we allowed the intermediate appeal to proceed.

II

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. Notwithstanding the seeming purport of the language, the Supreme Court has regularly held that the Amendment applies to suits by a citizen against her own State. See, e.g., Welch v. State Dept. of Highways, 483 U.S. 468, 97 L.Ed.2d 389 107 S.Ct. 2941, 2945, 2952-53 (1987); Hans v. Louisiana, 134 U.S. 1, 10, 10 S.Ct. 504, 505, 33 L.Ed. 842 (1890). Despite its sweep, the jurisdictional bar which the Eleventh Amendment erects is not absolute; it can be lifted by Congress or it can be waived. The focus in this case is on what Congress purposed: did it mean to abrogate State immunity to damage actions for infringement of the Copyright Act?

The precincts patrolled by abrogation are not commodious. Within their cramped confines, congressional intent is never lightly to be inferred. The jurisdictional bar endures unless and until Congress enacts a law which "express[es] its intention to abrogate the Eleventh Amendment in unmistakable language in the statute itself." Atascadero State Hospital v. Scanlon, 473 U.S. 234, 243, 105 S.Ct. 3142, 3148, 87 L.Ed.2d 171 (1985). Lane attempts to negotiate this narrow corridor, asserting that Congress removed the States' Eleventh Amendment immunity by passage of the Copyright Act. There are, however, several obstacles blocking her path.

It is an open question whether Congress possesses the power to blunt the prophylaxis of the Eleventh Amendment when acting pursuant to the Copyright and Patent Clause, U.S. Const. art. I, Sec. 8, cl. 8. Admittedly, Congress can defeat the States' immunity to suit in federal court when enforcing the substantive provisions of the Fourteenth Amendment. See Welch, 107 S.Ct. at 2946; Fitzpatrick v. Bitzer, 427 U.S. 445, 456, 96 S.Ct. 2666, 2671, 49 L.Ed.2d 614 (1976). But it is less settled whether Congress has the power, when legislating under article I, to abolish Eleventh Amendment immunity. The Court has recently granted certiorari and heard oral argument on much of the same question, but has yet to resolve it. See United States v. Union Gas Co., 832 F.2d 1343 (3d Cir.1987), cert. granted, --- U.S. ----, 108 S.Ct. 1219, 99 L.Ed.2d 420 (1988) (Commerce Clause).

Intriguing though the tangram may be, we need not strain to solve it today. The case at hand is so postured that we can emulate the Court and "assume, 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 Sec. 5 of the Fourteenth Amendment." Welch, 107 S.Ct. at 2946; see also County of Oneida v. Oneida Indian Nation, 470 U.S. 226, 252, 105 S.Ct. 1245, 1261, 84 L.Ed.2d 169 (1985) (similar). In so doing, we adhere to well-considered precedents in this, and other, circuits, deferring decision of the question in cases susceptible to resolution on independently sufficient grounds. See, e.g., BV Engineering v. UCLA, 858 F.2d 1394, 1397 (9th Cir.1988), cert. denied, --- U.S. ----, 109 S.Ct. 1557, 103 L.Ed.2d 859 (1989); Richard Anderson Photography v. Brown, 852 F.2d 114, 117 (4th Cir.1988), cert. denied, --- U.S. ----, 109 S.Ct. 1171, 103 L.Ed.2d 229 (1988); WJM, Inc. v. Mass. Dep't of Public Welfare, 840 F.2d 996, 1001-02 (1st Cir.1988).

III

Having sidestepped the first hurdle, we find the second to be insurmountable. Appellant's core contention is that the Copyright Act was meant to strip the States of their Eleventh Amendment immunity from suit in a federal venue. Leaping to such a conclusion, we think, illustrates the sanguine elevation of hope over reason.

In recent years, the Court has crafted an increasingly stringent test to determine whether Congress intended to dismantle the shelter of the Eleventh Amendment in any given instance. The touchstone, of course, is Atascadero. There, the Court remarked the critical importance of sovereign immunity ³ in our system of federalism 473 U.S. at 242, 105 S.Ct. at 3147, and cautioned that "it is incumbent upon the federal courts to be certain of Congress' intent" in this regard. Id. at 243, 105 S.Ct. at 3148 (emphasis supplied). To achieve such a high degree of assurance, it is essential that Congress "unequivocally express th[e] intention [to vitiate Eleventh Amendment immunity] in the statutory language" itself. Id. Because the Rehabilitation Act of 1973, 29 U.S.C. Sec. 701 et seq. (1982), "f[e]ll far short of expressing an unequivocal congressional intent to abrogate the States' Eleventh Amendment immunity," it failed this rigorous test. Id. at 247, 105 S.Ct. at 3150.

In Welch, the drumbeat grew louder. The Court reiterated the stringencies of Atascadero in considering the Jones Act, 46 U.S.C.App. Sec. 688 (1982), sustaining an Eleventh Amendment defense because "Congress has not expressed in unmistakable statutory language its intention to allow States to be sued in federal court under the Jones Act." 107 S.Ct. at 2947. The Welch Court made clear that, to the extent earlier precedent may have suggested a more flexible approach, that precedent should be disregarded. See id. at 2948 (previous methodology, involving "discussion of congressional intent to negate Eleventh Amendment immunity ... [,] no longer good law"). See also Brown, State Sovereignty under the Burger Court--How the Eleventh Amendment Survived the Death of the Tenth, 74 Geo.L.J. 363, 383 (1985) ("it is clear that Atascadero changed the rules for abrogation"). Against this backdrop, the height of the bar which appellant must vault becomes readily apparent.

Let us turn next to the precedent which purports to chart the junction where the Copyright Act and the Eleventh Amendment intersect. While the Supreme Court has never decided whether the Act was meant to abrogate Eleventh Amendment immunity, the straws in the wind are rather distinctive. The two circuits to address this precise issue since 1985 have concluded that the language of the Copyright Act does not measure up to the uncompromising Welch/Atascadero benchmark. See BV Engineering, 858 F.2d at 1399 (overruling Mills Music, Inc. v. State of Arizona, 591 F.2d 1278 (9th Cir.1979)); Richard Anderson Photography, 852 F.2d at 117. Although some courts had earlier concluded that Congress, by passing the Copyright Act, intended to remove the States' immunity, see, e.g., Mills Music, 591 F.2d at 1284-86; Johnson v. University of Virginia, 606 F.Supp. 321, 324 (W.D.Va.1985), the slate...