Mills Music, Inc. v. State of Ariz., 75-3630

Citation591 F.2d 1278
Decision Date26 February 1979
Docket NumberNo. 75-3630,75-3630
Parties, 1978-81 Copr.L.Dec. 25,060 MILLS MUSIC, INC., Plaintiff-Appellee, v. STATE OF ARIZONA and Arizona Coliseum and Exposition Center Board, a Body Politic under and by virtue of the State of Arizona, Defendants-Appellants.
CourtUnited States Courts of Appeals. United States Court of Appeals (9th Circuit)

Fred W. Stork, III, Phoenix, Ariz., for defendants-appellants.

Samuel J. Sutton, Cahill, Sutton & Thomas, Phoenix, Ariz., for plaintiff-appellee.

Appeal from the United States District Court for the District of Arizona.

Before HUFSTEDLER and GOODWIN, Circuit Judges, and LUCAS, * District Judge.

LUCAS, District Judge:

The State of Arizona and the Arizona Coliseum and Exposition Center Board ("Coliseum Board") appeal from a joint judgment awarding the plaintiff, Mills Music, Inc. ("Mills"), $75,000 in damages for willful copyright infringement and $25,000 in attorney's fees. Appellants' sole contention on appeal is that the Eleventh Amendment precludes an award of damages and attorney's fees against a state and one of its political agencies.

I. FACTS

Mills brought suit in federal court on June 14, 1973 charging Arizona and the Coliseum Board with deliberate infringement of Mills' copyrighted musical composition, "Happiness Is." Mills alleged that the Coliseum Board, the agency of the state government charged with operating the state fair, had used its song as the theme and for the promotion of the 1971 Arizona State Fair. In addition to copyright infringement, Mills charged unfair competition.

Arizona and the Coliseum Board filed a motion to dismiss predicated upon Section 1(e) of the Copyright Act, 17 U.S.C. 1(e), 1 which provides that a person who performs a musical composition, but does not do so publicly and for profit, is not liable. This motion was denied, and defendants filed an Answer admitting the jurisdictional allegations of the Complaint. 2 At no time in the pretrial or trial proceedings did defendants raise their Eleventh Amendment defense.

At the close of trial, the Court found for the plaintiff. The Court determined that defendants' infringing activities were "willful, with full notice and knowledge of plaintiff's copyrights and in total disregard for those rights." Conclusions of Law P 53. Further, the Court found that the defendants made numerous unauthorized arrangements, ultimately selected a favored arrangement, and then made 64 taped recordings of this arrangement. These tapes were used to broadcast a total of 3,928 performances of the unauthorized arrangement on both radio and television.

The Court also specifically rejected defendants' argument that the 1971 Arizona State Fair had not been conducted for a profit, Findings of Fact, PP 37-48, finding that "the 1971 Arizona State Fair was a commercial activity which directly competed with other similar forms of entertainment." Findings of Fact, P 48. Accordingly, the Court rejected defendants' argument, based upon a Section 1(e) defense, that the fair had not been conducted for a profit. The Court's decision can be best summarized by its own words:

"The defendants' taking of plaintiff's rights was total; every right contemplated by the Copyright Statute, except perhaps the right to print and the right to vend were infringed with impunity."

Conclusion of Law, P 42.

Defendants raised their Eleventh Amendment defense for the first time in a motion to amend the Findings of Fact and Conclusions of Law. After this motion was denied, defendants appealed to this Court from the judgment of the trial court. 3

II. ELEVENTH AMENDMENT IMMUNITY

Recently, in Riggle v. California, 577 F.2d 579 (9th Cir. 1978), this Court briefly recounted the origins of the Eleventh Amendment. 4 There we noted:

"During and after the ratification process of the United States Constitution, the states feared that federal constitutional authority might be construed to allow citizens of another state or foreign states to bring suits against the states in federal court. See Edelman v. Jordan, 415 U.S. 651, 660-662, 94 S.Ct. 1347, 39 L.Ed.2d 662 (1974); New Hampshire v. Louisiana, 108 U.S. 76, 86-88, 2 S.Ct. 176, 27 L.Ed. 656 (1883). When these fears were realized in Chisholm v. Georgia, 2 U.S. (2 Dall.) 419, 1 L.Ed. 440 (1793), the states quickly reacted with ratification of the Eleventh Amendment, which 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."

577 F.2d at 581.

The principle of sovereign immunity embodied in the Eleventh Amendment, See Hans v. Louisiana, 134 U.S. 1, 10 S.Ct. 504, 33 L.Ed. 842 (1890), has been judicially construed to extend to a "suit by private parties (against public officials) seeking to impose a liability which must be paid from public funds in the state treasury . . . ." Edelman v. Jordan, 415 U.S. 651, 663, 94 S.Ct. 1347, 1356, 39 L.Ed.2d 662 (1974); See also Hutto v. Finney, 437 U.S. 678, 98 S.Ct.

2565, 57 L.Ed.2d 522 (1978). The Supreme Court has held that the Eleventh Amendment applies to monetary awards against states whether based upon their wrongful withholding of welfare benefits, Edelman v. Jordan, supra, upon statutory provisions of the Fair Labor Standards Act ("FLSA"), 29 U.S.C. § 216(b), Employees v. Department of Public Health & Welfare of Missouri, 411 U.S. 279, 93 S.Ct. 1614, 36 L.Ed.2d 251 (1973); or upon implied rights of action in tort for breaches of federal statutory duties. Riggle v. California, supra; But cf. Hutto v. Finney, supra, 98 S.Ct. at 2576-79 (permitting award of attorneys fees against states as part of congressionally defined costs).

As this action was prosecuted both against the State of Arizona and a political entity of the state, Mills' action is clearly barred unless the State and the Coliseum Board have waived their Eleventh Amendment immunity or consented to jurisdiction. 5

III. CONSENT TO JURISDICTION

Mills argues that Arizona and the Coliseum Board consented to the exercise of federal court jurisdiction by admitting jurisdiction in their Answer and by failing to interpose the Eleventh Amendment defense until after trial. See Gunter v. Atlantic Coast Line R. Co., 200 U.S. 273, 26 S.Ct. 252, 50 L.Ed. 477 (1906); Clark v. Barnard, 108 U.S. 436, 2 S.Ct. 878, 27 L.Ed. 780 (1883).

Although a state may waive its Eleventh Amendment immunity, State of Missouri v. Fiske, 290 U.S. 18, 54 S.Ct. 18, 78 L.Ed. 145 (1933); Skokomish Indian Tribe v. France, 269 F.2d 555, 560 (9th Cir. 1959), such a waiver is not to be lightly inferred. Jacobson v. Tahoe Regional Planning Agency, 566 F.2d 1353, 1361 (9th Cir. 1977). In Edelman v. Jordan, supra, the Supreme Court recently considered the effect of failing to raise the Eleventh Amendment in a timely fashion. There, the Eleventh Amendment defense was first raised in the Court of Appeals after an award of judgment against the state in the district court. Despite the failure to raise the defense earlier, the Court of Appeals treated the defense on the merits. The Supreme Court commented:

"We approve of this resolution, since it has been well settled since the decision in Ford Motor Co. v. Department of Treasury, supra (323 U.S. 459, 65 S.Ct. 347, 89 L.Ed. 389), that the Eleventh Amendment defense sufficiently partakes of the nature of a jurisdictional bar so that it need not be raised in the trial court."

415 U.S. at 677-78, 94 S.Ct. at 1363.

In light of Edelman, we feel constrained to hold that Arizona and the Coliseum Board did not waive their Eleventh Amendment defense by failing to interpose this defense until after trial and entry of judgment. Furthermore, in light of the fact that such a waiver is not to be lightly inferred, we hold that defendants have not waived their Eleventh Amendment defense by admitting the jurisdiction of the district court in their Answer. Absent some mention of the Eleventh Amendment in their admission of jurisdiction, defendants did not relinquish their Eleventh Amendment defense. 6

IV. WAIVER

In addition to arguing that Arizona and the Coliseum Board consented to jurisdiction by failing to raise in a timely fashion their Eleventh Amendment objection, Mills also argues that defendants waived their objection through their voluntary participation in an activity regulated by federal law, See, e. g., Parden v. Terminal Ry. of Alabama State Docks Dept., 377 U.S. 184, 84 S.Ct. 1207, 12 L.Ed.2d 233 (1964); and through constitutional subordination of sovereignty. See, e. g., Fitzpatrick v. Bitzer, 427 U.S. 445, 96 S.Ct. 2666, 49 L.Ed.2d 614 (1976).

In a series of recent cases, the Supreme Court has probed the nature and extent of a state's waiver of its Eleventh Amendment immunity. In Parden v. Terminal Ry., supra, the Supreme Court held that Alabama had waived its Eleventh Amendment immunity by operating a railroad in interstate commerce after the enactment of the Federal Employers' Liability Act ("FELA"), 45 U.S.C. §§ 51, 60. In finding waiver, the Court relied upon the statute's provision for a suit against a class of defendants which included the states as operators of railroads.

Nine years after Parden, the Supreme Court refused to apply that decision to subject a state to suit under the Fair Labor Standards Act ("FLSA"), 29 U.S.C. § 216(b), on grounds that Congress had not expressly done so and "would not be presumed to take such action silently." Employees v. Department of Public Health & Welfare of Missouri, 411 U.S. 279, 284-5, 93 S.Ct. 1614, 1618, 36 L.Ed.2d 251 (1973). The Court continued:

"It is not easy to infer that Congress in legislating pursuant to the Commerce Clause, which has grown to vast proportions in its applications, desired silently to deprive the States of an immunity they have long enjoyed under another part of the Constitution."

411 U.S. at 285, 93 S.Ct. at 1618. The ...

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