A photographer took pictures of members of a Native American tribe and printed them on hats, shirts and souvenirs. The tribe purchased the merchandise for resale for a number of years. The photographer allegedly discovered that the tribe was producing and distributing unauthorized copies of the merchandise. The photographer brought a claim for copyright infringement in state court (the relevance of which will appear later). The tribe removed the case to federal court because federal courts have exclusive jurisdiction over claims arising under the Copyright Act.

Tribal sovereign immunity

The tribe argued that the copyright claim was barred by sovereign immunity. The Court provided a nice outline of tribal sovereign immunity. A couple of excerpts:

“Suits against Indian tribes are … barred by sovereign immunity absent a clear waiver by the tribe or congressional abrogation.” Oklahoma Tax Comm’n v. Citizen Band Potawatomi Indian Tribe, 498 U.S. 505, 509, 111 S.Ct. 905, 112 L.Ed.2d 1112 (1991); Stock West Corp. v. Lujan, 982 F.2d 1389, 1398 (9th Cir.1993).

* * * * *

Tribal sovereign immunity applies in both federal and state courts. Snow v. Quinault Indian Nation, 709 F.2d 1319, 1321 (9th Cir.1983), citing Santa Clara Pueblo v. Martinez, 436 U.S. 49, 58, 98 S.Ct. 1670, 56 L.Ed.2d 106 (1978). “The immunity … extends to suits for declaratory and injunctive relief,” and “is not defeated by an allegation that [the tribe] acted beyond its powers.” Imperial Granite Co. v. Pala Band of Mission Indians, 940 F.2d 1269, 1271 (9th Cir.1991). Tribal sovereign immunity is not dependent on a distinction between on-reservation and off-reservation conduct nor is it dependent upon a distinction between the governmental and commercial activities. Kiowa Tribe v. Manufacturing Techs., 523 U.S. 751, 754-55, 118 S.Ct. 1700, 140 L.Ed.2d 981 (1998). A tribe’s sovereign immunity extends both to tribal governing bodies and to tribal agencies which act as an arm of the tribe. Allen v. Gold Country Casino, 464 F.3d 1044, 1046 (9th Cir.2006). Tribal sovereign immunity extends to tribal officials when acting in their official capacity and within the scope of their authority but not to individual tribe members generally. United States v. Oregon, 657 F.2d 1009, 1013 n. 8 (9th Cir.1981).

Waiver

The plaintiff argued that [1] Congress abrogated immunity in the Copyright Act, [2] the tribal-state compact waives immunity, [3] the contract between the photographer and the tribe waives immunity, and [4] the defendant waived immunity by removing the case to federal court. The Court rejected the first three arguments perfunctorily but there were fireworks on whether the tribe waived immunity by removing the case to federal court. The Court ultimately found that the tribe didn’t waive immunity by removing the case. The Court, however, overtly stated that the plaintiff had more than a puncher’s chance on appeal because precedent on the issue was inconsistent:

At this point, the case law is not absolutely clear whether tribal sovereign immunity is more like the immunity enjoyed by the states or by foreign sovereigns in the circumstance of removal. There are a number of cases in which courts have applied tribal sovereign immunity after removal without addressing the issue. See New York v. Shinnecock Indian Nation, 280 F.Supp.2d 1, 8 (E.D.N.Y.2003); Maynard v. Narrangansett Indian Tribe, 798 F.Supp. 94 (D.R.I.1992); Missouri ex rel. Nixon v. Coeur D’Alene Tribe, 1997 U.S. Dist. LEXIS 21776 (W.D.Mo. Nov. 19, 1997). In other cases where tribes removed, courts have pierced immunity but not based on waiver from removal. See Dry Creek Lodge, Inc. v. Arapahoe & Shoshone Tribes, 623 F.2d 682 (10th Cir.1980). These cases, in conjunction with Sonoma Falls, leads to the conclusion that removal to federal court does not waive tribal sovereign immunity. However, the issue is not settled and appeal may be fruitful for Plaintiffs.

What next?

Federal courts sometimes state that they lack subject matter jurisdiction when they find they can’t hear a case because of sovereign immunity. 28 U.S.C. 1447(c) states that “[i]f at any time before final judgment it appears that the district court lacks subject matter jurisdiction, the case shall be remanded.” The question then became, was the court required to follow 1447(c) strictly and remand the case back to state court even if the state court lacked subject matter jurisdiction. The Court found that it could dismiss the case without remand:

Sovereign immunity is commonly termed an issue of subject matter jurisdiction, but some courts have found that, “sovereign immunity is a jurisdictional consideration separate from subject matter jurisdiction.” Kreig v. Prairie Island Dakota Sioux, 21 F.3d 302, 305 (8th Cir.1994). It is not clear whether the language of Section 1447(c) mandates remand in cases where the “subject matter jurisdiction” lacking is an assertion of sovereign immunity. Further, the Ninth Circuit has recognized a futility exception when subject matter jurisdiction is lacking, stating, “Where the remand to state court would be futile, however, the desire to have state courts resolve state law issues is lacking. We do not believe Congress intended to ignore the interest of efficient use of judicial resources…. District court resolution of the entire case prevents any further waste of valuable judicial time and resources. The district court correctly denied the motion to remand and dismissed the state claims.” Bell v. City of Kellogg, 922 F.2d 1418, 1424-25 (9th Cir.1991); accord Herman v. Salomon Smith Barney, Inc., 266 F.Supp.2d 1208, 1213 (S.D.Cal.2003); Dale v. IRS, 2001 U.S. Dist. LEXIS 7013, *7 (E .D. Cal. April 27, 2001). In this case, the state court would not have jurisdiction over Defendants if the federal court does not. No party has asked for remand in this case and it appears that remand would be futile. The case will be dismissed.

There was an update last week in Cabridge University Press v. Becker, a case that is to my knowledge the first large-scale infringement suit brought against an institution of higher education.  A group of publishers alleged that Georgia State University facilitated the infringing online distribution of their works.

The plaintiffs made the tactical decision to only seek an injunction and declaratory judgment, not damages.  As a state institution, the publishers are likely barred from seeking money damages against the employees due to sovereign immunity, conferred by the Eleventh Amendment.  We discussed this topic a couple of months ago in Frank Romero v. California Department of Transportation, 2009 WL 650629 (C.D. Cal. 2009) (unpublished). Following the filing of the complaint, Georgia State University adopted a new copyright policy that its counsel argued has rendered moot any claims based on its past-conduct.

At bar, Georgia State University sought a protective order that future discovery should be limited to its “ongoing and continuous conduct.” Plaintiffs argued that further discovery of past practices was releveant because it needed to show infringement to be awarded an injunction, and because it thought that the new copyright policy was inadequate.

Judge Evans granted the Defendant a protective order, finding that the Plaintiffs had conducted sufficient discovery to present evidence of past infringement.

Additional discovery in to these past practices, at this point would be unduly burdensome.  Even if the new copyright policy fails to address the alleged problems in the old policy, Plaintiffs will have had sufficient discovery to argue that there is no significant difference between the two.

Frank Romero v. California Department of Transportation, 2009 WL 650629 (C.D. Cal. 2009) (unpublished).

Frank Romero painted a mural titled “Going to the Olympics” to commemorate the 1984 Olympics. The mural is located in L.A. on the Alameda Street underpass of freeway 101.  In 1984, it looked like this:

Then it looked like this:

Now it looks like this:

Romero filed suit, asserting that the California Department of Transportation had violated his 106A right of integrity, potentially granted to him under the Visual Artists Rights Act of 1990. 106(A)(3)(b) provides, in part, that an author of a visual work has the right to “prevent any destruction of a work of recognized stature.” Caltrans moved to dismiss claiming that it was immune from suit under the Eleventh Amendment.

Waiver of sovereign immunity by accepting federal funds

Romero argued that Caltrans waived its sovereign immunity by accepting federal funds to build and maintain California’s highways, which Romero contended, included an allocation for mural restoration. Romero argued that, by accepting the funds, Caltrans agreed to abide by the Copyright Remedy Clarification Act (“CRCA”), 17 U.S.C. § 511(a), which provides that “[a]ny State … shall not be immune, under the Eleventh Amendment of the Constitution of the United States.” (Emphasis added.)  Judge Philip S. Gutierrez rejected this argument finding that the federal government hadn’t conditioned the funds upon California waiving sovereign immunity:

It is true that one way for a state to waive its immunity is to accept federal funds. Clark v. State of Cal., 123 F.3d 1267, 1271 (9th Cir.1997) (quoting Atascadero, 473 U.S. at 247). However, “mere receipt of federal funds cannot establish that a State has consented to suit in federal court.” Atascadero, 473 U.S. at 246-47. Rather, the “funding statute [must] ‘manifest a clear intent to condition participation in the programs funded under the Act on a State’s consent to waive its constitutional immunity.’ ” Id. at 247; see also Clark, 123 F.3d at 1271. In this case, Romero has failed to point the Court to any provision in the relevant funding statute that manifests a clear intent to condition the State’s participation on its consent to waive its Eleventh Amendment immunity.

Congressional abrogation of sovereign immunity

Romero next argued that Congress abrogated California’s Eleventh Amendment immunity in the CRCA.  The Court cited Seminole Tribe of Fla. v. Fla., 517 U.S. 44, 55 (1996) for the relevant standard:

It is now well-established that Congress can abrogate a State’s sovereign immunity only if it has (1) unequivocally expressed its intent to abrogate the immunity and (2) acted under a valid exercise of power.

Caltran’s didn’t dispute the fact that (1) Congress intended to abrogate immunity.  In regards to (2) acting under a valid exercise of power, Judge Gutierrez cited Seminole for the proposition that Congress can abrogate sovereign immunity when acting to enforce constitutional rights under Section 5 of the Fourteenth Amendment (“The Congress shall have power to enforce, by appropriate legislation, the provisions of this article”), but cannot circumvent the Eleventh Amendment under the powers granted in Article I. Congress’ power under the Fourteenth Amendment is remedial not substantive:

In determining whether, for purposes of Congress’ enforcement power under section 5 of the Fourteenth Amendment, federal legislation is permissibly remedial or impermissibly substantive, there must be a congruence and proportionality between the injury to be prevented or remedied and the means adopted to that end. This determination can be made by looking at three factors: (1) the nature of the injury to be remedied and whether the state exhibited a pattern of constitutional violations; (2) Congress’ consideration of the adequacy of state remedies to redress the injury; and (3) the coverage of the legislation.

The Court found that (1) it didn’t appear that the CRCA was enacted in response to substantial evidence of copyright infringement by the States; (2) Congress barely considered the availability of state remedies (such as claims for the unlawful taking of private property by the States or breach of contract claims) for infringement when it enacted the CRCA; and (3), the CRCA doesn’t respond to a history of widespread and persisting deprivation of constitutional rights of the type Congress has faced in enacting proper prophylactic § 5 legislation.

Thus, Judge Guitierrez granted Celtran’s motion to dismiss, and joined the Fifth Circuit (Chavez v. Arte Publico Press, 204 F.3d 601, 605 (5th Cir.2000)) and the Southern District of California (Masters, Inc. v. Bd. of Trustees of the Cal. State Univ. Sys., 552 F.Supp.2d 1088, 1094 (S.D.Cal.2008)) in finding that Congress didn’t abrogate sovereign immunity under the CRCA:

In summary, the Court finds that although Congress expressed its unequivocal intent to abrogate the Eleventh Amendment enacting the CRCA, Congress did not have authority to exercise those powers under section 5 of the Fourteenth Amendment. Accordingly, Congress did not validly abrogate sovereign immunity under the CRCA.