Revised March 10, 2000

UNITED STATES COURT OF APPEALS

FOR THE FIFTH CIRCUIT

No. 93-2881

DENISE CHAVEZ

Plaintiff-Appellee,

v.

ARTE PUBLICO PRESS, et al.,

Defendants-Appellants

Appeal from the United States District Court for the

Southern District of Texas

February 18, 2000

Before KING, Chief Judge, JONES and EMILIO M. GARZA, Circuit Judges.

EDITH H. JONES, Circuit Judge:

This Copyright/Lanham Act case has once again been

remanded, this time by this Court si tting en banc, for

reconsideration in light of the Supreme Court’s decisions in Florida

Prepaid Postsecondary Educ. Expense Bd. v. College Savings Bank

,

___

U.S.

___, 119 S.Ct. 2199 (1999) and College Savings Bank v. Florida

Prepaid Postsecondary Educ. Expense Bd.

,

___ U.S. ___, 119 S.Ct.

2219 (1999). The issue is whether Congress properly exercised its

authority to subject states to suit in federal court for violation1 A recent summary calendar decision of this court held, while this

case was being briefed and considered on remand, th at a state’s sovereign

immunity could not be abrogated by the enactment of the Copy right Remedy

Clarification Act, a statute at issue here. R odriguez v. Texas Comm’n on the

Arts

, Case No. 98-10251 (5th Cir., Jan. 10, 2000). We are bound by that

decision, but in light of our post-remand briefing requests to the parties in

this case, and their and the amici’s voluminous responses, a complete response

is appropriate to the issues presented.

2 See Trademark Remedy Clarification Act, Pub.L. No. 102-542, 106 Stat.

3567 (1992) (codified at 15 U.S.C. §§1122, 1125(a)); Copyright Remedy

Clarification Act, Pub.L.No. 101-553, 104 Stat. 2749 (1990) (codified at 17

U.S.C. §§501(a), 511).

2 of those statutes. S ee 15 U.S.C. §1122; 17 U.S.C. §§501, 511.

Plaintiff Chavez asserts that the University of Houston infringed

her copyright by continuing to publish her book without her consent

and violated the Lanham Act by naming her, also without her

permission, as the selector of plays in another book it published.

The University of Houston contends that because it enjoys immunity

from unconsented-to suit in federal court under the Eleventh

Amendment, the case must be dismissed. Once again, we agree with

the University. 1

Abrogation of a state’s Eleventh Amendment immunity turns

on an express statement of intent by Congress and a constitutionally

valid exercise of power. S ee Seminole Tribe of Fla. v. Florida

, 517

U.S. 44, 55, 116 S.Ct. 1114, 1123, 134 L.Ed.2d 252 (1996). Congress

amend ed both the Lanham Act and the Copyright Act and explicitly

required states to submit to suit in federal court for violation of

their provi sions; 2 thus, the express statement requirement is

fulfilled. The remaining question, to be considered in the light3

of Coll ege Savings

, F lorida Prepaid

, and Kimel v. Fla. Bd. of

Regents

, 2000 WL 14165 (Ja n. 11, 2000), is whether Congress had

authority to abrogate state sovereign immunity in the Acts.

The first opinion in this case followed the Parden theory

that states can impliedly waive their sovereign immunity and, on

that basis, held that the University could be sued in federal court

for violating the two statutes. S ee Chavez v. Arte Publico Press

,

59 F.3d 539, 547 (5th Cir. 1995) [hereinafter Chavez I ]; see Parden

v. Terminal Ry. Of Ala. Sta te Docks Dep’t , 377 U.S. 184, 84 S.Ct.

1207, 12 L.Ed.2d 233 (1964).

After the Supreme Court remanded for re consideration in

light of Seminole

, we concluded that Parden ’s implied waiver theory

was no longer viable. S ee Chavez v. Arte Publico Press

, 157 F.3d

282, 287 (5th Cir. 1998) [hereinafter Chavez II ]. Taking S eminole

in conjunction wit h C ity of Boerne v. Flores

, 521 U.S. 507, 117

S.Ct. 2157, 138 L.Ed.2d 624, we hel d that the Copyright Remedy

C larification Act (hereinafter CRCA) and the Trademark R emedy

Clarification Act (hereinafter TRCA) were invalid exercises of

Article I legislative p ower. Further, upholding the statutes as

valid exercises of legi slative power pursuant to section 5 of the

Fourteenth Amendment would be an impermissible end-ru n around

Seminole

. I d

. Chavez II was vacated by the court’s vote for en banc

reconsideration, but the case was remanded to this panel after

College Savings and Florida Prepaid were decided.3 Chavez has conceded that, in the light of College Savings

, the TRCA

is not a valid exercise of legi slative authority, and she no longer seeks to

defend it.

4 Senator Leahy has recently introduced a bill, entitled the

“Intellectual Property Protection Restoration of 1999,” to r estore federal

remedies for violations of intellectual property rights by States. Senator Leahy

describes that legislation as providing a damages remedy to redress

constitutional violations and ensuring the availability of the full range of

prospective equitable relief. See 145 Cong. Rec. S13552-04, S13558 (daily ed.

Oct. 29, 1999) (statement of Sen. Leahy).

5 As Chavez II predicted, College Savings expressly overruled Parden

and its i mplied waiver theory. S ee College Savings

, 119 S.Ct. at 2228. That

theory is no longe r available to support an Article I abrogation of Eleventh

Amendment Immunity.

4

Chavez and the amici who have filed supplemental postremand briefs contend that the CRCA validly enforces the due process

clause of the Fourteenth Amendment. And for the first time in this

case, they defend the C RCA as a means of enforcing the privileges

or immunities clause of the Fourteenth Amendment. 3 While Chavez’s

arguments are interesting, we again find them unpersuasive. 4

A) Section 5 of the Fourteenth Amendment

Chave z and a mici justify the CRCA’s abrogation of state

Eleventh Amen dment immunity under section 5 of the Fourteenth

Amendment, because Congress acted to prevent states from depriving

copyright holders of their property without due process of law.

They contend that the legis lative history demonstrates that the

waiver effected by the CRCA is proportional to its remedial object. 5

The University of Houston preliminarily counters that

since Congress relied only on the copyright clause of Article I in

enacting the CRCA, we may not consider another ground of5

constitutionality

-- the Fourteenth Amendment

-- that Congress did

not invoke. The most recent Supreme Court authority supports this

position. In a footnote in F lorida Prepaid

, the Court declined to

con sider the Just Compensation clause as a basis for the PRCA,

stating:

There is no suggestion in the language of the

statute itself, or in the House or Senate Reports of

the bill which became the statute, that Congress had

in mind the Just Compensation Clause of the Fifth

Amend m ent. Since Congress was so explicit about

invoking its authority under Article I a nd its

authority to prevent a State from depriving a person

of property without due process of law under the

Fourteenth Am endment, we think this omission

precludes consideration of the Just Compensation

Clause as a basis for the Patent Remedy Act.

Florida Prepaid

, 119 S.Ct. at 2208 n.7. Earlier Supreme Court

jurisprudence was unsettled on this point. Proceeding

chronologically, the Court first held that the “constitutionality

of action taken by Congress does not depend on recitals of the power

which it undertakes to exercise.” W oods v. Cloyd W. Miller Co.

, 333

U.S. 138, 144, 68 S.Ct. 421, 424, 92 L.Ed. 596 (1948). In its next

brush with the issue, the Court held that “because [legislation to

enforce the Fourteenth Amendment] imposes congressional power on a

state involuntarily, an d because it often intrudes on traditional

state authority, we shou ld not quickly attribute to Congress an

unstated intent to act under its authority to enforce the Fourteenth

Amendment.” P en nhurst State School v. Halderman , 451 U.S. 1, 15,

101 S.Ct. 1531, 1539, 67 L.Ed.2d 694 (1981). Following P ennhurst

,6

however, the Court appeared to retrench when it stated it must “be

able to discern some legislative purpose or factual predicate that

supports the exercise of [Fourteenth Amendment] power. That does

not mean, however, that Congress need anywhere re cite the words

‘section 5' or ‘Fourteenth Amendment’ or ‘equal protection.’” EEOC

v. Wyoming

, 460 U.S. 226, 243 n.18 , 103 S.Ct. 1054, 1064 n.18, 75

L.Ed.2d 18 (1983). Even if F lo rida Prepaid , a majority opinion,

does not rule out Chavez’s reliance on the implicit authority of the

Fourteenth Amendment, we ho ld on the merits that the CRCA did not

properly enforce the due process clause.

Congress can abrogate the states’ sovereign immunity when

acting to enforce constitutional rights pursuant to section 5 of the

Fourteenth Amendment. S ee Seminole

, 116 S.Ct. at 1128 (citing

Fitzpatrick v. Bitzer

, 427 U.S. 445, 96 S.Ct. 2666, 49 L.Ed.2d 614

(19 76)). C ity of Boerne

, however, states that when Congress

legislates pursuant to section 5, “there must be a con gruence and

proportionality between the injury to be prevented or remedied and

the means adopted to that end.” C ity of Boerne

, 117 S.Ct. at 2164.

F lorida Prepaid applied the principles of City of Boerne to the

PRCA, a statute analogous to the CRCA in the patent field. The

analytical framework that Florida Prepaid sets forth requires

examination of three aspects of the legi slation: 1) the nature of

the injury to be reme died; 2) Congress’s consideration of the

adequacy of state remedies to redress the injury; and 3) the6 In Chavez II

, we said that whether copyrights were a form of property

protectable against the states raised troubling issues. The Supreme Court held

in Florida Prepaid that patents are considered property within the meaning of the

due process clause. See Florida Prepaid , 119 S.Ct. at 2208. Since patent and

copyright are of a similar nature, and patent is a form of property protectable

against the states, copyright would seem to be so too.

7 c overage of the legislation. This framework was recently

reconfirmed by the Court in Kimel

, supra

.

The first consideration is the nature of the injury to be

remedied and whether the state’s conduct evinced a pattern of

constitutional violations. S ee Florida Prepaid

, 119 S.Ct. at 2207.

The underlying conduct at issue here is state inf ringement of

copyrights, rather than patents , and the “constitutional injury”

consists of possibly unremedied, or uncompensated, violation of

copyrights by states. S ee H.R. Rep. No. 101-282, pt.1, at 3 (1989),

reprinted in 1990 U.S.C.C.A.N. 3949, 3951 [hereinafter H.R. Rep.].

Such infringements, it is contended , would “take” the copyright

owners’ property without due process of law. 6

The Supreme Court conc luded in F lorida Prepaid that

“Congress identified no pattern of patent i nfringement by the

States, let alone a pattern of constitutional violations.” F lorida

Prepaid

, 119 S.Ct. at 2207. Although the legislative history for

the CRCA documents a few more instances of copyright infringement

than the PRCA legisla tive history did of patent violations, the

CRCA’s history exhibits similar deficiencies. For example,

testimony before the House Subcommittee in favor of t he CRCA7 Mr. Oman also stated that “[the States] are all respectful of the

copyright laws.” House Hearings, at 8.

8 acknowledged that “the States are not going to get involved in

wholesale violation of the copyright laws.” Copyright Remedy

Clarification Act and Copyright Office Report on Copyright Liability

of States: Hearings Before the Subcomm. on Courts , Intellectual

Property, and the Administration of Justice of the House Comm. on

the Judiciary, 101st Cong. 53 (198 9) [hereinafter House Hearings]

(statement of Ralph Oman, Register of Copyrights, Library of

Congress). 7 In addition, the bill’s sponsor stated that “thus far

there have not been any significant number of wholesale takings of

copyright r ights by States or State entities.” I d

., at 48

(statement of Rep. Kastenmeier).

At the request of Congress, the Copyright Office reported

on the relation between the states’ copyright liability and the

Eleventh Amendment; in that report, no more than seven incidents of

State copyright infringement enabled by the Eleventh Amendment were

documented. Register of Copyrights, C opyright Liability of States

and the Eleventh Amendment 5-9 (1988) [hereinafter Copyright Office

Report]. Nor did the Senate hear evidence of a pattern of

unremedied copyright infringement by the States. Rather than expose

a current epidemic of unconstitutional deprivations, the testimony

before Congress worried principally about the potential for future

abuse, see House Hearings, at 7 (statement of Ralph Oman), and the9

concerns of copyright owners about that potential, see Copyright

Office Report, at 5-17. C ompare Florida Prepaid

, 119 S.Ct. at 2207

(“At m ost, Congress heard testimony that patent infringement by

States might increase in the future.”).

Second, we consider whether Congress studied the existence

and adequacy of state remedies for injured copyright owners when a

state infringes their copyrights. S ee Florida Prepaid

, 119 S.Ct.

at 2208. The legislative histories of the PRCA and CRCA are again

parallel. In each case, Congress barely considered the availability

of state remedies for infringement. S ee Florida Prepaid

, 119 S.Ct.

at 2209 (finding no evidence that Congress considered whether patent

infringement remedies were available in the states). With regard

to the CRCA, one witness testified that his company’s attorneys told

him that state and local courts were unavai lable because only

federal courts can hear copyright infringement cases. S ee House

Hearings, at 51 (statement of James Healy, Vice P resident of

Ent erprise Media). In addition, the Copyright Office provided a

survey of state waive rs of Eleventh Amendment immunity as an

appendix to its report. S ee Congressional Research Service, Waiver

of Eleventh Amendment Immunity from Suit: State Survey Relating to

C opyright Infringement Claims (1988) (Appendix C to the Copyrigh t

Office Report). These are the only two allusions to state remedies

in the legislative history. While Congress referred briefly to the

Copyright Office’s report in the House Report on the bill, Appendix8 In stead of considering the adequacy of possible state remedies,

Congress focused on the adequacy of injunctive relief, stating that injunctive

relief was not adequate protection for copyright owners. See H.R. Rep, at 8.

10 C was m entioned neither in the House Report nor in any of the

congressional hearings. Furthermore, as pointed out in a statement

submitted to Congress, the survey failed to include information on

state remedies fo r the unlawful taking of private property by the

state government. S ee The Copyright Remedy Cla rification Act:

Hearing Before the Subcomm. on Pat ents, Copyrights and Trademarks

of the Senate Comm. on the Judiciary, 101st Cong. 123 (1989)

[hereinafter Senate Hearing] (statement on behalf of the Educators’

Ad Hoc Committee on Copyrig ht Law). As noted in C havez II

, there

are other possible remedies in state courts -- breach of contract

claims, for example -- that Congress also never considered. 8

As if to emphasize its lack of interest in state remedies,

Congress rejected the idea of granting state courts concurrent

jurisdiction over copyright cases, an alternative solution that

would have avoided any Elev enth Amendment problems. Congress

rejected this solution not because it was an inadequate remedy, but

because Congress believed concurrent jurisdiction would undermine

the uniformity of copyright law. S ee H.R. Rep., at 9. Although

uniformity is undoubtedly an important goal, “that is a factor which

belongs to the Article I patent-power calculus, rather than to any

determination of whether a state plea of sovereign immunity deprives11

a patentee of prope rty without due process of law.” F lorida

Prepaid , 119 S.Ct. at 2209. The same is true here.

Finally, Florida Prepaid examined the breadth of coverage

of the legislation. S ee id. at 2210. In enacting legislation

pursuant to section 5 of the Fourteenth Amendment, Congress should

ensure that there is “a congruence and proportionality between the

injury to be prevented or remed ied and the means adopted to that

end.” City of Boerne

, 521 U.S. at 520; see also id

. at 533 (“Where,

however, a congress ional enactment pervasively prohibits

constitutional state action i n an effort to remedy or to prevent

unconstitutional state action, limitations ... tend to ensure

Congress’ [sic] means are proportionate to ends legitimate under

§5.”). As the Court noted in Florida Prepaid , Supreme Court

jurisprudence indicates that a deprivation, to fit the meaning of

the due proce ss clause, must be intentional; a negligent act that

causes unintended injury is not sufficient. S ee Florida Prepaid

,

119 S.Ct. at 2209. Copyright infringement actions, like those for

patent infringement, ordinarily require no showing of intent to

infringe. Instead, knowledge and intent are relevant in regard to

damages. S ee 1 Neil Boorstyn, Boorstyn on Copyright §12.15 (2d ed.

1999) (“Although defendant’s innocent inten t is no defense to an

infringement action, it may affect recov erable damages”); c ompare

Florida Prepaid

, 119 S.Ct. at 2209 (“Actions predicated on direct

patent infringement

... do not require any showing of intent to12

infringe; instead, knowledge and intent are considered only with

respect to damages.”). In addition, Mr. Oman, the Register of

Copyrights, acknowledged that most copyright infringement by states

is unintentional, stating that “[the States] would want [immunity]

o nly as a shield for the State treasury from the occasiona l error

or misunderstanding or innocent infringement.” House Hearings, at

8. In enacting the CRCA, however, Congress did nothing “to confine

the reach of the Act by limiting the remedy to certain types of

infringement,

. . . or providing for suits only against States with

questionable remedies or a high incidence of infringement.” F lorida

Prepaid

, 119 S.Ct. at 2210. Its “indiscriminate scope” cannot be

reconciled with the principle that legislation pursuant to the due

process clause of the Fourteenth Amendment must be proportionate to

legitimate section 5 ends. See id

.

Since the record does not indicate that Congress was

responding to the kind of massive constitutional violations that

have prompted proper remedial legislation, that it considered the

adequacy of state remedies that might have provided the required due

process of law, or that it sought to limit the coverage to arguably

constitutional violations, we conclude that the CRCA is, like the

PRCA, an improper exercise of Congressional legislative power. The

Court said in Florida Prepaid that PRCA’s “apparent and more basic

aims were to pro vide a uniform remedy for patent infringement and

to place States on the same footing as private parties un der that9 See H.R. Rep., at 9-11 (noting that uniformity concern s militated

against granting concurrent jurisdiction to state courts and that immunity

introduced a disparity between state and private educa tional institutions);

Senate Hearings, at 129 (statement by Sen. DeConcini that th e disparity in

liability for copyright infring ement between state and private educational

institutions is a difficult situation).

10 Our conclusion is buttressed by the fact that the Copyright Office

recommended that, if Union Gas held that Congress could not abrogate state

sovereign immunity under its Article I powers, Congress provide for concurrent

jurisdiction where states are defendants in copyright infringement damages cases.

See Copyright Office Report, at ix. Other witnesses also treated the holding in

Union Gas as a prerequisite to the passage of the CRCA. S ee House Hearings, at

160 (statement by Professors Leo J. Raskind, David Shipley and Peter Jassi).

13 regime. These are proper Article I concerns, but that Article does

not give Congress the power to enact such legislation after Seminole

Tribe .” Florida Prepaid

, 119 S.Ct. at 2211. The same can be said

about the CRCA, 9 which is doomed in the wake of Florida Prepaid and

Kimel

. 10

B) The Privileges and Immunities Clause

Chavez also argues that the CRCA is a proper exercise of

section 5 power to enforce the privileges and immunities clause of

the Fourteenth Amendment. She argues that since copyright is a form

of property and an originalist interpretation of the privileges and

immunities clause protects th e right to acquire and control

property, that claus e protects the right to acquire and enforce a

copyright. Chavez buttresses this argument by reference to the

Supre me Court’s recent opinion that appeared to revive the longnascent privi leges and immunities clause. S aenz v. Roe

, 526 U.S.

489, 119 S.Ct. 1518, 143 L.Ed.2d 689 (1999). She further asserts

tha t the Slaughterhouse Cases are not to the contrary since they14

hold only that the privileges and immunities clause does not protect

rights secured by state law; a copyrigh t is a right secured by

Federal law. S ee Slaughter-House Cases

, 83 U.S. (16 Wall.) 36, 74

(1872).

Two propositions dispose of the viability of these

arguments in the present case. First, if the S laughterhouse Cases

actually su pported Chavez’s position, she could have claimed a

deprivation of the privileges and immunities clause from the outset

of this litigation. Second, Chavez’s attempt to piggyback on S aenz

,

whe re the Supreme Court has provided no guidance for its “modern”

interpretation of the clause, asks more of this court than it should

give. Litigation must run its course at some point. Chavez has

held ample opportunity to develop novel theories of recovery in the

last years of litigation.

CONCLUSION

For the foregoing reasons, we conclude that Cha vez’s

action may not be maintained in federal court against the University

of Houston, Arte Publico Pr ess, and Nicholas Kanellos in his

official capacity. The district court’s judgment is Vacated, and

the case is remanded with instructions to Dismiss insofar as these

defendants are sued for money damages.

VACATED and REMANDED with Instructions to DISMISS

.