Rodriguez v. Texas Com'n On Arts

Decision Date29 January 1998
Docket NumberNo. CIV. A. 5:97-CV-331-C.,CIV. A. 5:97-CV-331-C.
Citation992 F.Supp. 876
PartiesAbel RODRIGUEZ, Plaintiff, v. TEXAS COMMISSION ON THE ARTS, Defendant.
CourtU.S. District Court — Northern District of Texas

David Eldon Moody, Lubbock, TX, for Plaintiff.

Lisa M. Nieman, Litigation Division, Atty. Gen., Austin, TX, for Defendant.


CUMMINGS, District Judge.

On this day the Court considered Defendant Texas Commission on the Arts' ("the Commission") Motion to Dismiss under Rules 12(b)(1) and 12(b)(6) of the Federal Rules of Civil Procedure, filed November 17, 1997. On December 5, 1997, Plaintiff Abel Rodriguez ("Rodriguez") filed a response to the Commission's motion. After considering all relevant arguments and evidence, the Court GRANTS the Commission's Motion to Dismiss.


This is a copyright case. Rodriguez is an artist who designed a license plate for possible use by the Texas Department of Transportation. Rodriguez designed the license plate using his own creative abilities, without any contractual arrangement with the State of Texas. On October 24, 1994, Rodriguez wrote to Mr. Jerry Dike of the Texas Department of Transportation. In that letter, Rodriguez explained that he had redesigned and modernized a license plate design that he would like the State of Texas to consider. Rodriguez enclosed the first draft of his proposed design of the Texas license plate.

On November 14, 1994, Rodriguez again corresponded with Mr. Dike and enclosed a revised design that contained a copyright notice. On December 12, 1994, Rodriguez' license plate design was copyrighted. The Texas Legislature then enacted § 502.272 of the Texas Transportation Code which became effective September 1, 1995. V.T.C.A., Transportation Code § 502.272 (Vernon 1998). This law created the new "Texas Commission on the Arts" license plate, which incorporates the Texas flag as the background for the plate. This design by the Commission bears a striking resemblance to the proposed license plate design which Rodriguez submitted to the Texas Department of Transportation. After seeing the new Texas license plates, Rodriguez sued the Commission for copyright infringement.


Motions filed under Rule 12(b)(1) of the Federal Rules of Civil Procedure allow a party to challenge the subject matter jurisdiction of the district court to hear a case. Lack of subject matter jurisdiction may be found in any one of three instances, through: "(1) the complaint alone; (2) the complaint supplemented by undisputed facts evidenced in the record; or (3) the complaint supplemented by undisputed facts plus the court's resolution of disputed facts." Williamson v. Tucker, 645 F.2d 404, 413 (5th Cir.), cert. denied, 454 U.S. 897, 102 S.Ct. 396, 70 L.Ed.2d 212 (1981); see also Barrera-Montenegro v. United States, 74 F.3d 657, 659 (5th Cir.1996).

There are two ways to use a Rule 12(b)(1) motion to attack a complaint or cross-claim: a "facial attack" and a "factual attack." A facial attack requires the court merely to decide if the plaintiff has correctly alleged a basis for subject matter jurisdiction. 1995 Venture I, Inc. v. Orange County, Tex., 947 F.Supp. 271, 276 n. 7 (E.D.Tex. 1996). A facial attack is valid if from the face of the pleadings, the court can determine it lacks subject matter jurisdiction. For the purposes of the motion, the allegations in the complaint are taken as true. Saraw Partnership v. United States, 67 F.3d 567, 569 (5th Cir.1995).

By contrast, if the defendant had challenged the facts that formed the basis for the plaintiff's claim of subject matter jurisdiction, the attack would be factual and the court would therefore treat the motion differently. A factual attack challenges the existence of subject matter jurisdiction by looking beyond the pleadings. In reviewing a factual attack the court may consider matters outside the pleadings, such as testimony and affidavits. McDaniel v. United States, 899 F.Supp. 305, 307 (E.D.Tex.1995), aff'd, 102 F.3d 551 (5th Cir.1996).

Factual and facial attacks under Rule 12(b)(1) may occur at any stage of the proceedings. The plaintiff constantly bears the burden of proof that jurisdiction does in fact exist. Menchaca v. Chrysler Credit Corp., 613 F.2d 507, 511 (5th Cir.1980). A party may claim that subject matter jurisdiction is lacking by virtue of the plaintiff's inability to prove the elements of the federal cause of action in question. To determine whether a federal question is involved requires the court to consider whether the complaint states a claim "arising under" federal law. O'Quinn v. Manuel, 773 F.2d 605, 607 (5th Cir.1985).

The burden of proof for a Rule 12(b)(1) motion to dismiss is on the party asserting jurisdiction. McDaniel, 899 F.Supp. at 307. When a Rule 12(b)(1) motion is filed with a Rule 12(b)(6) motion, the court should consider the jurisdictional attack before addressing the attack on the merits. Hitt v. City of Pasadena, 561 F.2d 606, 608 (5th Cir.1977) (per curiam). This requirement prevents a court without jurisdiction from dismissing a case with prejudice. The court's dismissal of a plaintiff's case because the plaintiff lacks subject matter jurisdiction is not a determination on the merits and does not prevent the plaintiff from pursuing a claim in a court that does have subject matter jurisdiction. Id.


The Commission contends that the Eleventh Amendment to the United States Constitution bars Rodriguez' suit. The Eleventh Amendment provides that:

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.

Although the plain language of the amendment only bars suits by citizens of one state suing another state, and does not bar a suit by a citizen against his own state, the Supreme Court has interpreted the Eleventh Amendment as providing both types of immunity. Hans v. Louisiana, 134 U.S. 1, 10 S.Ct. 504, 33 L.Ed. 842 (1890). The Supreme Court's interpretation of the Eleventh Amendment has two parts: "first, that each State is a sovereign entity in our federal system;" Seminole Tribe of Florida v. Florida, 517 U.S. 44, 116 S.Ct. 1114, 1122, 134 L.Ed.2d 252 (1996); and second, that "`[i]t is inherent in the nature of sovereignty not to be amenable to the suit of an individual without its consent.'" Id. (citing Hans, 134 U.S. at 13, 10 S.Ct. at 506 (emphasis deleted), quoting THE FEDERALIST NO. 81, at 487 (A.Hamilton) (Clinton Rossiter ed.1961)). It is undisputed that the State of Texas has not consented to this lawsuit. The Commission therefore argues that the Eleventh Amendment bars Rodriguez' claims against it, because the Commission is an agency or instrumentality of the State of Texas.

Rodriguez argues in reply that Congress, through a 1990 amendment to the Copyright Act of 1976, unambiguously abrogated the State of Texas' immunity from suit. 17 U.S.C. § 511(a); Unix Sys. Lab., Inc. v. Berkeley Software Design, Inc., 832 F.Supp. 790, 799 (D.N.J.1993). To determine whether Congress has abrogated a State's sovereign immunity, the Court asks two questions: first, whether Congress has "`unequivocally expresse[d] its intent to abrogate the immunity,'" and second, "whether Congress has acted `pursuant to a valid exercise of power.'" Seminole Tribe, 116 S.Ct. at 1123 (quoting Green v. Mansour, 474 U.S. 64, 68, 106 S.Ct. 423, 426, 88 L.Ed.2d 371 (1985)).

Congress' intent to abrogate the States' immunity from suit must be obvious from "a clear legislative statement." Blatchford v. Native Village of Noatak, 501 U.S. 775, 786, 111 S.Ct. 2578, 2584, 115 L.Ed.2d 686 (1991). As the Supreme Court has stated, "Congress may abrogate the States' constitutionally secured immunity from suit in federal court only by making its intention unmistakably clear in the language of the statute." Dellmuth v. Muth, 491 U.S. 223, 228, 109 S.Ct. 2397, 2400, 105 L.Ed.2d 181 (1989) (quoting Atascadero State Hosp. v. Scanlon, 473 U.S. 234, 242, 105 S.Ct. 3142, 3147, 87 L.Ed.2d 171 (1985) (internal quotations omitted)). The language of the 1990 amendments to the Copyright Act evinces an unmistakable intent to abrogate State sovereign immunity. The statute reads:

Any State, any instrumentality of a State, and any officer or employee of a State or instrumentality of a State ... shall not be immune, under the Eleventh Amendment of the Constitution of the United States or under any other doctrine of sovereign immunity, from suit in Federal court by any person, ... for a violation of any of the exclusive rights of a copyright owner ....

17 U.S.C. § 511(a). The plain language of the statute makes it indubitable that Congress intended through this Act to abrogate the States' sovereign immunity from suit in copyright matters.

Having concluded that Congress clearly intended to abrogate the States' sovereign immunity through the Copyright Act amendment, the Court now considers whether Congress passed the Act "pursuant to a valid exercise of power." Mansour, 474 U.S. at 68, 106 S.Ct. at 425-26. The "inquiry into whether Congress has the power to abrogate unilaterally the States' immunity from suit is narrowly focused on one question: Was the Act in question passed pursuant to a constitutional provision granting Congress the power to abrogate?" Seminole Tribe, 116 S.Ct. at 1125 (citing Fitzpatrick v. Bitzer, 427 U.S. 445, 452-56, 96 S.Ct. 2666, 2669-71, 49 L.Ed.2d 614 (1976)).

The Supreme Court has previously found authority to abrogate under only two provisions of the Constitution. In Fitzpatrick, the Court recognized that the Fourteenth Amendment, by expanding federal power at the expense of state autonomy, fundamentally altered the balance of state and federal power struck by the Constitution. Fitzpatrick, 427...

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