By Cheryl Beise, J.D.
Supreme Court’s recent Allen decision clarified that sovereign immunity bars copyright infringement claims against state actors.
The Texas A&M University Athletic Department, the Texas A&M 12th Man Foundation, and two individuals were not liable for copyright infringement, violations of the digital Millennium Copyright Act, or unlawful taking in violation of the United States and Texas Constitutions for publishing an article that copied and plagiarized an author’s copyrighted work, the federal district court in Houston has ruled. The case will proceed only against defendant Brad Marquardt, the individual accused of submitting the infringing article for publication. The University was immune from liability for copyright infringement under the Eleventh Amendment, as made clear by the Supreme Court’s recent decision in Allen v. Cooper. The two other individuals (Alan Canon and Lane Stephenson) were immune from liability under the doctrine of qualified immunity; and the author failed to plead facts to show that the Foundation, Cannon, or Stephenson had knowledge of the infringing article. The court also rejected the author’s argument that sovereign immunity did not apply to the copyright infringement claims because they constituted a taking without compensation under the Fourteenth Amendment. The University, the Foundation, and the individuals were severed from the action so an immediate appeal could be taken (Canada Hockey LLC v. Texas A&M University Athletic Department, September 4, 2020, Hanen, A.).
In 2017, plaintiffs Michael J. Bynum and Canada Hockey LLC filed suit against the Texas A&M University Athletic Department, the Texas A&M 12th Man Foundation ("the Foundation"), and three individuals—Brad Marquardt, Alan Canon, and Lane Stephenson. Marquardt and Cannon worked in the Athletic Department. The plaintiffs asserted claims for copyright infringement against all defendants, except the Foundation; contributory infringement against all defendants; vicarious infringement against the Foundation and the Athletic Department; violations of the Digital Millennium Copyright Act (DMCA) against Marquardt and the Athletic Department; and takings claims under the United States Constitution and the Texas Constitution against the Athletic Department.
Bynum alleged that he is the author of a biography of E. King Gill and the history of the A&M "12th Man" story. Bynum had emailed Brad Marquardt asking for assistance in locating photographs to include in his book. Bynum attached a PDF draft copy of his book, which contained copyright management information including Bynum’s name, copyright date, and a warning against unauthorized use or reproduction. Bynum later learned that a near verbatim copy of his work appeared as a feature story in the University’s e-newsletter which included a hyperlink to a page on the Athletic Department’s website that displayed the infringing copy of Bynum’s Gill Biography.
In March 2019, the court granted the defendants’ motions to dismiss all claims, except the claims against Marquardt. The court held that Texas A&M University was the proper party rather than its Athletic Department, and that as an arm of the State of Texas, the University was immune from copyright infringement claims under the doctrine of sovereign immunity. The court also dismissed the takings claims as barred by the Eleventh Amendment. The court dismissed the claims against the Foundation for failure to state a claim and the claims against Cannon and Stephenson under qualified immunity and failure to state a claim.
Four months later, the plaintiffs filed a motion for reconsideration. The court stayed the case until the U.S. Supreme Court issued its decision in Allen v. Cooper, 140 S. Ct. 994 (2020). In Allen, the Supreme Court unanimously held that the Copyright Remedy Clarification Act (CRCA) failed to abrogate states’ sovereign immunity for copyright infringement claims. After Allen, the court lifted the stay and denied the plaintiffs’ motion for reconsideration regarding its copyright claims against the University. However, the court ordered briefing on whether the takings claims were barred. The plaintiffs then filed a motion asking the court to reconsider its partial denial of its first motion to reconsider. The plaintiffs also asked for leave to amend. The court denied the plaintiffs’ motions.
Copyright claims against Texas A&M. The plaintiffs contended that Allen does not abrogate immunity in this case because they pleaded actual violations of their constitutional rights and not just copyright infringement. Relying on United States v. Georgia, 546 U.S. 151 (2006), the plaintiffs argued that the defendant’s infringing conduct also amounted to an uncompensated taking and a deprivation of property without remedial process—both violations of the Fourteenth Amendment. In Georgia, the Supreme Court held that a prisoner’s claims for money damages under the American with Disabilities Act (ADA) were not barred by sovereign immunity because the alleged conduct independently violated the Fourteenth Amendment.
The court was not persuaded by the plaintiffs’ argument. The court declined to find that Georgia materially altered sovereign immunity jurisprudence. Only one circuit court has relied on Georgia to find an abrogation of sovereign immunity outside the ADA. That case dealt with claims for sexual harassment and retaliation under the Government Employee Right Act of 1991. Moreover, the Supreme Court in Georgia made clear that the power to abrogate sovereign immunity lies with Congress, not with litigations, the court said. Georgia did not provide a basis for litigants "to plead around the Eleventh Amendment." More importantly, the Supreme Court in Allen explained that Congress in the CRCA did not create a cause of action against states for conduct that actually violates the Fourteenth Amendment.
For 20 years, the Fifth Circuit has held that Congress has not abrogated Eleventh Amendment immunity for copyright infringement claims, the court noted. The Supreme Court unanimously reached the same conclusion a few months ago when it decided Allen. The plaintiffs’ argument that their copyright infringement claims were not barred because the University’s conduct also violated the Fourteenth Amendment was "creative," but unsuccessful. The court was bound to follow clear precedent.
Takings claims against A&M. The plaintiffs urged the court to reinstate their federal takings claim against A&M. They argued that sovereign immunity had been abrogated for their federal takings claim. Alternatively, they argued that the state of Texas waived sovereign immunity for this claim. Citing Bay Point Properties. Inc. v. Mississippi Transportation Communication, 937 F.3d 454,456 (5th Cir. 2019), the University countered that the Fifth Circuit recently confirmed that federal takings claims are barred by sovereign immunity. The court agreed with the University, noting that on at least three occasions the Eleventh Circuit has held that takings claims for money damages against the state are barred by the Eleventh Amendment. The court was bound to follow precedent.
The plaintiffs also contended that sovereign immunity was abrogated because Texas has closed its courts to their federal takings claim. The plaintiffs cited University of Houston System v. Jim Olive Photography, 580 S.W.3d 360,377 (Tex. App. 2019), holding that copyright is not "property" for purposes of the Takings Clause in the Texas Constitution or United States Constitution. The plaintiffs reasoned that when the State of Texas commits copyright infringement, the copyright owner has no forum available to seek compensation. The court was "skeptical that a single decision of first impression by one intermediate court of appeals that copyrights are not property subject to the Taking Clause amounted to the entire state ‘clos[ing] it courts to Plaintiffs’ federal takings claim.’" This was particularly so because this decision was issued before Allen and is currently on appeal to the Texas Supreme Court. Even if the plaintiffs were correct about the Jim Olive decision, the plaintiffs failed to cite any authority that the Eleventh Amendment is automatically abrogated, the court said.
The court next concluded that the State of Texas did not "unequivocally express" its consent to be sued for federal takings claims in federal court. The University has consistently opposed being a party to this lawsuit. The court denied the motion for reconsideration as to the takings claims and reaffirmed dismissal of the claims without prejudice.
The court denied the plaintiffs’ motion to amend the claims against the University because the motion was untimely and would prejudice the defendants. The court also found that an amendment would be futile.
Claims against the Foundation. The court for the second time found that the plaintiffs failed to plead sufficient facts to show that the Foundation was liable for contributory or vicarious copyright infringement or removal of copyright management information. The infringing biography was published on the Foundation’s website, but there was no indication that the Foundation, with knowledge of Marquardt’s infringing activity, induced, caused, or materially contributed to that infringement. The court declined to find that the Foundation’s status as the Athletic Department’s primary benefactor gave it dominion or control over the Athletic Department’s activities. The plaintiffs’ new allegations also did not cure the defect in pleading that the Foundation lacked supervisory authority over Marquardt.
Claims against Cannon and Stephenson. The court again determined that University employees Cannon and Stephenson were entitled to qualified immunity against the plaintiffs’ secondary infringement and DMCA claims. According to the court, it was not objectively unreasonable for Cannon and Stephenson to publish and circulate an article that was given to them by Marquardt, a coworker, and another individual who was required to follow the University’s online and social media policy. The court declined to find that Cannon and Stephenson had actual or constructive knowledge that the article "by Whit Canning" was plagiarized. The allegations in plaintiffs’ proposed second amended complaint did not alter this conclusion. The amendment was futile and therefore denied.
The court severed the Athletic Department, the Foundation, and Cannon and Stephenson from the case and entered final judgment on the claims against them so that the plaintiffs could immediately appeal the court’s ruling concerning sovereign immunity. The only remaining claims in the case—for direct, contributory, and vicarious copyright infringement—were against Marquardt.
This case is No. 4:17-cv-00181.
Attorneys: J Matthew Williams (Mitchell Silberberg & Knupp LLP) for Canada Hockey LLC d/b/a Epic Sports. H Melissa Mather, U.S. Attorney office, for Brad Marquardt and Texas A&M University Athletics Department.
Companies: Texas A&M University Athletics Department
MainStory: TopStory Copyright TechnologyInternet TexasNews GCNNews
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