Denise Chavez, United States of America, Intervenor v. Arte Publico Press Nicolas Kanellos University of Houston

DC, Staff, Zener, Washington, for V. Robert WISDOM, Before JONES and EMILIO Intervenor. GARZA, Judges. M. Circuit Austin, TX, Feeney, Patrick John Rus- J. REMAND FROM THE SUPREME ON Feather, Bush, Moseley, sel Riddle & Jack- THE COURT OF UNITED son, Houston, TX, Defendants-Appel- STATES lants. JONES, Judge: EDITH H. Circuit Sanders, City, Carey New York Charles J. Copyright/Lanham Act case was re- This Rifkind, Ramos, Paul, Weiss, & R. Wharton manded from the Court for recon- Sims, Prokaver, Rose, Garrison, S. Charles light sideration of its decision Mendelsohn, City, New York Goetz & Florida, Tribe Fla. v. Publishers, of American Amicus Curiae Ass’n L.Ed.2d 252 Guild, Inc., Inc., Ass’n of Ameri- The Authors Congress properly exercised issue is whether Presses, Inc., University Nat. Music states to suit in federal Ass’n, Inc., Publishers Publishers Software court for violation of those statutes. See Ass’n, Society of American Journalists 1122; §§ Plain- 17 U.S.C. U.S.C. Authors, Inc., Society American of Media University of tiff Chavez asserts that Photographers, Copyright Inc. and infringed copyright by Clearance continu- Houston her Center, ing publish without her consent her book Inc. her, by naming 5 of the Fourteenth Act the Lanham and violated asserts, light party No now Amendment. permission, her the selector without also statutorily could published. it in another book plays abrogate Eleventh Amendment contends University of Houston that because powers regu- pursuant to its constitutional suit enjoys immunity from unconsented-to I, copyrights late commerce or under Article Amend- court under Eleventh Although 8.3 Chavez’s theories Section ment, This the case must be dismissed.1 weighty, unpersuasive. we find them time, University. agree we Abrogation of a state’s I. The Status of Parden. express turns on an superfluous It would be to recount by Congress a con of intent statement panel’s previous pre-Semi- discussion of stitutionally of power. valid exercise it to nole cases. Suffice summarize Seminole, Congress re at 1123. S.Ct. Parden, context, im in historical seemed Act and cently amended the Lanham both a state suit in ply impliedly consented to explicitly required states Copyright Act and court it undertook federal when non-sover in court for viola submit to suit federal regulated by activities in the fed eign areas thus, provisions;2 express of their tion conclusion, Seizing government. on our eral requirement The re fulfilled. statement points out that cites Par- Chavez Seminole maining, troubling question is whether still unremarkable, holding “a ease and den as compel had to sur states unrelated, completely proposition that their Amendment render Eleventh may sovereign immunity.” their States waive purposes. for these Parden). Seminole, (citing at 1128 S.Ct. previous opinion, we In our concluded language, critique in a of the This embedded variegated jurispru Court’s decision,4 reasoning in the is in Union Gas theory the Univer supported the dence by a reaffirmation of terpreted Chavez as sity impliedly of Houston waived Eleventh Parden. Parden held that when the State immunity because the Universi Amendment railroad, operate it Alabama undertook contract ty chose to enter into a with Chavez subject Employees so to the Federal did Congress had im and use her name after Act, in Liability permits which suit statutory Copyright in the and posed waivers court, and thus terstate railroads doing price Acts. busi Lanham The state’s immunity. Amendment waived possibility in those included the ness areas reads reference Chavez This derived suit in federal court. conclusion proposition that Parden for the approve theory understanding of the Parden from our in an area a state conducts business when sovereign immuni implied waiver of state regulation, and the federal federal ty. Ry. Terminal Ala. See Parden v. partic government expressly has conditioned Dept., Docks 377 U.S. State Elev ipation in that on a waiver of business (1964). 1207, 12L.Ed.2d 233 immunity, the con enth This is a waiver. and who filed duct effectuates such Chavez numerous amici by this interpretation of Parden used Parden fact the briefs contend that the post-remand Seminole, previous opinion explain Jus theory in our implied waiver survived positions in Parden and, respective alternatively, provisions tice White’s v. Arte Publi congressional in Union Gas. See Chavez validly implement question trade source of interstate disposition of the issues be- 3. The constitutional 1. This court's other parties regulation, portions of 15 is unaffected which includes tween mark 1125(a), remand. Court's § Commerce Clause. See is the U.S.C. al., Wright Procedure et Federal Practice and 13B Act, Remedy 2. See Trademark Clarification at 314 102-542, (codi- (1992) No. 106 Stat. 3567 Pub.L. 1122, 1125(a)); Copyright §§ fied at U.S.C. Co., Pennsylvania v. Gas 491 U.S. 4. See Union 101-553, Act, Remedy Pub.L. No. Clarification S.Ct. (codified (1990) 17 U.S.C. 104 Stat. at 511). 501(a), §§ Cir.1995) Press, (5th [abrogation sovereignty] of state I have co F.3d just rejected. Chavez [hereinafter ]. Gas, 44, 109 interpretation fairly Union reflects at at

Whether however, is another matter. Sem- (Scalia, J., concurring part dissenting inole cites Parden only for the statement part). explained, As Scalia sovereign immu- waive their “states are, all prescriptions insofar as nity,” a matter of hornbook law which is concerned, prospective application their congressional analytically separate from conditional, in a sense and —to the extent immunity. overruling of state objects prescriptions that the con- proposition quashed the latter sciously engage activity or hold the overturned Union Gas: unequivocally produces liability status that be re- —can Union Gas the result [B]oth described as invitations to “waiver.” depart plurality’s rationale from our estab- Id. at (emphasis 109 S.Ct. at 2303 understanding the Eleventh lished concludes, original). “If Scalia state sover- accepted and undermine the eign immunity reality, it must mean function Article III. feel bound to We than this.” Id. more conclude that Union Gas wrongly de- be, is,

cided and that it should and now Second, Seminole reaches the broad con- overruled. clusion that: Seminole, at 1128. The nec- S.Ct. Even when the Constitution vests Con- the Union Gas essarily only disavowed not gress complete lawmaking over a (the plurality reasoning “plan of the conven- area, particular the Eleventh Amendment theory of Eleventh Amendment waiv- tion” prevents Congressional authorization of er), but also Justice White’s fifth vote by private parties against suits unconsent- Gas result. Union favor of the Justice ing states. Eleventh Amendment re- concurrence, White’s Union Gas we inferred III, judicial power stricts the under Article previous opinion, had be based on and Article I cannot be used to circumvent the Parden theory implied waiver. We placed upon the constitutional limitations cannot understand how the Court could have jurisdiction. federal overruled Union Gas only regard 4- to the Seminole, (footnote at 1131-32 S.Ct. toto, and not plurality opinion vote and we omitted). accompanying In the footnote this attempted do not it such a feat. believe holding, on the Court comments Justice Ste- reasons, Seminole suggests For other Seminole prohibit vens’s criticism that will the Parden implied theory waiver has been jurisdiction over suits to enforce rejected. First, expressly incorpo- bankruptcy, copyright, and antitrust laws reasoning rates much of the of Justice Sca- against the states and that there would con- Gas, Union agreed lia’s dissent in a dissent sequently remedy” be “no for state violations upon by the same members of the Court who of those federal statutes. See id. at 1131 n. majority. formed core of the out, though 16. The footnote does not rule explicitly Justice dissent criticizes Scalia’s on, improper to rule would have been Justice sleight describes of hand involved does, however, Stevens’s fears. It observe the Parden theory: implied waiver novelty proposition of the statutory acknowledge abrogated that the those schemes

[T]o Federal Govern- sovereign immunity. ment can make the waiver of state sover- states’ It also lists oth- eign immunity a condition to the er remedies available to redress state viola- State’s least, very Congress action in a field that has authori- tions of federal law. At the ty regulate substantially give no comfort those who the same as footnote can Parden acknowledging implied waiver theo- the Federal Govern- contend sovereign ry permits ment eliminate state immu- all suits in federal court Copy- nity pow- unconsenting states founded on the exercise of its Article is, adopt very principle right ers—that or Lanham Acts. Amendment, 5 of the Fourteenth because reading of Seminole inesca

A fair “deprived” “prop- her Chavez of “drop the other that we must pably suggests erty” process of law” when it shoe,”5 Congress cannot without “due and declare Copyright Lanham and Acts. regulable violated the that are states’ activities condition “implied Congress can abro- consent” Seminole reaffirmed upon their by federal law express gate the states’ when being in federal court. sued acting pursuant of the Lanham to section 5 Four- Copyright provisions of contrary require teenth Amendment. See purport to Acts that Bitzer, 427 (citing Fitzpatrick v. Congress’s power under Article I. U.S. outside (1976)). 2666, 49 L.Ed.2d 614 pre- to a This does not amount conclusion Amendment, This is “the Fourteenth because overruling of Su- sumptuous, premature adoption adopted after of the Elev- well are forbid- precedent, which we preme Court enth and the ratification Quijas Rodriguez de den do. Constitution, operated pre-exist- alter Inc., 490 Express, Shearson/American ing balance between state and federal 1921-22, 477, 484, 109 achieved Article III and the Eleventh (1989) (“If precedent of Amendment.” Id. case, yet application in a Court has direct rejected in appears some to rest reasons argument, we To examine this as decisions, Appeals the Court of other line of present purposes that sume for directly con- the case which should follow the Fourteenth expressly relied on Amend trols, prerogative leaving to this Court only it enacted the Trade ment not decisions.”). own The Su- overruling its Act, Remedy mark Clarification but also the already precedents ex- preme had Court’s Remedy Act.8 Copyright Clarification Con implications of pressly several Par- overruled gress legislation section 5 of can enact even Seminole was decided.6 We den before which embraces the Fourteenth Amendment precisely remains viable believe Parden by Due any right guaranteed the Process the extent found “unremarkable” Semi- Flores, City Boerne v. 521 Clause. See of a state waive its Eleventh nole—that 2157, 2163-64, 507, 117 U.S. from suit.7 (1997) (citing States v. L.Ed.2d 624 United Price, 1152, 1154, 787, 789, U.S. 86 S.Ct. 5 of Fourteenth Amend- II. Section the (1966)). Congress’s 16 L.Ed.2d ment. 5, however, is under “remedial” and designed provisions of the pursued by to enforce the argument other Cha Amendment, Congress validly not to “decree is exer Fourteenth vez amici Amendment’s pursuant of Fourteenth legislative power its to section substance cised 280, 43, Gas, S.Rep. No. at the Fourteenth Amendment. See 5. Union 491 U.S. at Sess., (1992). Cong., Copy 13-15 102d I, See 59 F.3d at 542-46. Chavez expressly right Remedy Act does not Clarification rely the Fourteenth Amendment. on section of case, Circuit, type in a related of 7. The Third 282, Cong., H.R.Rep. 1st 101st Sess. See No. irrelevant found similar discussion Parden (1989). may leap to much a infer It be too decision, college as it believed the state to loan Congress’s on the Fourteenth Amend charged advertising reliance program false un govern represented copyright Act “core when it did der the Lanham a amendments ment in voluntary participation and not ment function” in the legislate expressly intent on that not state its running marketplace, like Alabama's Hosp. v. See Pennhurst State Sch. basis. College Savings in Parden. See Bank v. railroad 1531, 1539, 1, 16, Halderman, 451 101 S.Ct. U.S. Bd., Postsecondary Expense Prepaid Florida Educ. Wyo But EEOC see 353, (3d 1997). Cir. One could 131 F.3d 364-65 1054, ming, U.S. 243 n. University publish that the of Houston’s contend ing generally See 1064 n. also, CollegeSavings house is under Bank Commerce, Michigan Dept. 104 F.3d Timmer v. rationale, intimately govern related to the core J., part concurring (Boggs, ment function of education. part). dissenting is the same But result way. Congressional either 8. The U.S.Code and Administra- Remedy the Trademark tive News states that part passed pursuant Act Clarification the states to suit Id. at 2164. To to on the States.” restrictions Boerne, legislation which City prong of the Lanham paraphrase for violation of meaning Bank, of the Due Process alters F.3d at College Savings Act. enforcing to be cannot be said Clause 358-62.10 See id. Clause. copyright action Chavez’s breach City light of Seminole and Viewed University raises against of Houston Boeme, syllogisms are facile. too Chavez’s several levels. “property” problems on copyright contract position Her property, Copyrights species are indeed a having her name interest and her they protectable but the extent which “property” under the misappropriated are troubling In against raises issues. the states Amendment; breach Fourteenth noted the ab- Court misappropriation of her name of contract and past 200 of caselaw over the sence property; “deprived her” of and since copyrights years dealing with enforcement of they uncompensated, oc- deprivations were against Surely in federal courts the states.11 Finally, process of law. curred without due implies that there has been no this dearth “violated” the Due Process because the state Clause, abrogate against states in the federal courts. Congress was authorized to claim Nevertheless, appeals has held its Eleventh Amendment one court of Fourteenth Amendment. by section 5 of the protected in a that an interest Compensation and Just the Due Process step argu Even the first of Chavez’s Roth v. of the Constitution. See Clauses ment, protect property interests her claim (2d Cir.1983). Pritikin, 710 F.2d Amendment, by is uncer ed the Fourteenth Roth, however, the situation did not consider statutorily-created tain. While Chavez’s us, infringement claim before right protect misappropria name from her Roth, spec- In Circuit was state. Second Act,9 by the Lanham tion is assured entirely ulating issue of Con- on the different “property right” intangible right is not a by gress’s inability retroactively invalidate by the Four protected against the states Davis, pre-existing copyright con- 424 statute certain Paul v. teenth Amendment. Only slightly private parties. tracts between (1976), essentially discussion, Court so held appropos more of this the Su- reputa it concluded violations of preme affirms that trade secrets are cogniza the state are tional interests protected by Fifth Amendment property id. at ble under the Due Process Clause. See takings Ruckelshaus v. Monsan- clause. See (“[B]ut the interest Co., 986, 1002-03, to reputation respondent in alone which seeks 2872-73, By analogy, in this action federal court is to vindicate intangible property copyrights constitute ‘liberty’ ‘property’ quite different from the or least, that, purposes for receives some recognized [other Court] those protection. constitutional decisions.”) problem at hand can be further re- vein, In a similar the Third Circuit recent- by noting many that in cases an own- fined ly Lanham Act claim for a held that a busi- by copyright be licensed means of a er’s will misrepresentation goods ness’s its own Breach of the con- contract with the state. not rise to the level of a and services does might give tract rise remedies contract constitutional tort under Due Process infringement, perhaps even afford- as well as Consequently, the court Clause. held ing remedy copyright to the own- Congress did not have under Seminole a choice Inc., (9th Frito-Lay, opinion under Seminole of 9. See Waits v. 978 F.2d 1093 Bureau on status Cir.1992); Metro. Better Business infringement misrepre- for trademark or claims Directors, Houston, Inc., F.2d Inc. v. Medical competitor’s goods of a and services. sentation (5th Cir.1982). Id. at 116 S.Ct. 1114. College carefully Savings limited Bank it, holding express 1131 n. the facts and did not 11.See 116 S.Ct. at before Amendment Eleventh they abrogate states’ instance, if Chavez, chose for Although er.12 contract suits. copyright University immunity .against against the infringement sue alter- Houston, suggests that petition her the contention problem besets separate A existed. may have claims contract native prop- infringement claim copyright a aof is breach asserted Clause; claim Where Due Process erty protected con- certain concerning copyright, a on the contract If it rests much. proves too the claim First, have claims such follow. sequences interest created property uniqueness nation’s under” to “arise held not been of Cha- law, is the source which by federal juris- federal purposes laws for copyright end-run it is direct then copyright, vez’s 1338; Wright § 13B 28 U.S.C. See diction. Article holding that Seminole’s around Nimmer, 3872; & al., § 3 Nimmer supra, et to avoid employed may not be powers 12.01[A][l][a], for such ground § supra, the federal on limit Amendment’s Eleventh concerning a case a contract is that decisions easily legis- Congress could judicial power. involve (or does license patent) copyright attempt and then “property” interests late laws adjudication of federal construction for the federal subject to suit states state under to resolution left should be and This end-run interests. of such violation contract law. interpretation a liberal just possible under of a con interpretation Second, if the even the Fourteenth Clause of Process of the Due under arises copyright concerning a of Arti- theories tract as it was that a held law, generally have courts As federal by the court in Seminole. rejected Icle not consti does a contract breach in a related context: stated Third Circuit cogni process violation due procedural tute impacting on a busi- If a state’s conduct court.13 action by a zable Fourteenth implicated the always ness ordi to federalize reluctant been have Courts Amendment, have almost Congress would against suits of contract nary breach to suit states power to unrestricted v. Gol Co. D Maintenance S & states. abrogation pow- itsof through the exercise Cir.1988). (2d Our din, 844 F.2d tan- law that pass Congress could er. of con ordinary breach no discloses research ability of businesses gentially affected proceed allowed has been case that tract causes of action create and then operate is no There against a state. federal court they court if the states concerning why contracts reason obvious rights. federally created infringed on those differently for treated be copyrights should unacceptable result would This considering the particularly purposes, these limits directly the strict conflict would by the “aris expressed concerns federalism abrogate a state’s Congress’s powers jurisdiction line ing under” immunity. cases. Bank, 361. Cha- F.3d at Savings College aof the existence Thus, signs point to all no distinc- offered have her amici vez of con- breach remedy against the states none, her between tion, perceive we court. involving copyrights tracts any other and infringement claim copyright Boeme, counsels which City logic of of could intangible interests tangible or expand statutory language reading against abrogation Amendment to Eleventh give rise Bill of the of protections substantive way. in this provisions against Chavez’s read- militates Rights, also University’s also asserts Chavez Copyright Remedy and ing of the Trademark sub- property without of deprived her actions provisions Acts. Those Remedy Clarification judicial modern process. due stantive merely rem- than expanding, rather would had process has due history, substantive process due procedural of edying, violations Dist., F.2d 798 1988); Sch. Ind. Nimmer, v. Jett Dallas Nimmer on D. Nimmer & See 3 M. Cir.1986), part, (5th 491 754 n..3 Copyright § 10.15[A] aff'd 598 105 (3d Beharry, 242 F.2d (1st v. 13. See Reich F.2d 22 (1989); Depetrillo, 697 Casey v. cases); 1989) (collecting v. Madison Yatvin J.). Cir. 1983) including Breyer, (panel Cir. (7th Dist., Cir. 840 F.2d Metro. Sch. Furthermore, § claims, of the reliance on property rights nothing do with jus post judicial- Amendment as a hoc to extend this Fourteenth not about and we are abroga private Congress’s attempted for simply to assure tification ly-created doctrine require remedy against unconsenting § us to tion in U.S.C. 106 would parties of a conten- It is self- Perhaps ignore court. the result Seminole. in federal states appel- Amendment afterthought of the evident that the Fourteenth tion is a careless depriva protects individuals from state lant and amici process of property without due tions Four that section 5 of the The conclusion thus, generality, and at some level law con does embrace teenth Amendment arguably apply to authorize bank could gressional enforcement property adjudications of ruptcy court trend of consistent with the Lanham acts is of Boerne, rights. City But see far, only fed post-Seminole Thus decisions. (“The , 117 S.Ct. at -- — Equal enforce the Protec eral statutes the Fourteenth [of Enforcement Clause permit suits have been held to tion Clause ... did not authorize Con- Amendment] See, unconsenting e.g., Craw against states. upon gress pass ‘general legislation Cir.1997) (8th Davis, F.3d 1281 v. ford citizen, legisla- corrective rights of the but (Title IX); Michigan Dept. v. Timmer ‘legislate general- ...’ tion. (6th Cir.1997) Commerce, 104 F.3d 833 life, ly liberty, property, op- upon’ Act). (Equal Pay that enforce Statutes provide posed ‘power to the modes Clauses, Bankruptcy on the Commerce and action, redress’ offensive state hand, represent been found to other have not Constitution.”) (citations to the ‘repugnant’ Congress’s Fourteenth Amend exercises of omitted). If the Fourteenth In re power. ment remedial Creative broadly justify apply as to is held to so Inc., D.C., Washington, Goldsmiths of Bankruptcy Congress’ enactment of the Cir.1997) (4th (holding that bank F.3d 1140 requirement process, due as a Code ruptcy jurisdiction not within 5 of justify argument would ev- then the same Amendment); v. the Fourteenth Mills ery enforcement scheme as a re- federal (1st Cir.1997) (FLSA); Maine, 118 F.3d 37 quirement process of due under the Four- (10th Kansas, 115 F.3d 813 Cir. Aaron v. Clearly, Amendment. the Indian teenth 1997) Caviness, (FLSA); Wilson-Jones gaming regulation at issue Seminole (6th Cir.1996) (holding that F.3d 203 style itself have been to this would purview of section 5 FLSA is not within constitutionalization, pro- for the statute Amendment). But see of the Fourteenth for vided arbitration enforceable Prepaid College Savings Bank v. Florida rights governed property court Bd., Postsecondary Expense Educ. Thus, proceeds. gaming form of future (D.N.J.1996) pat F.Supp. (holding that a itself is inconsistent with “property” purposes ent is of the Four Congressional reading that would extend leg teenth Amendment and “remedial” power under 5 of Fourteenth abrogating islation reincorporate express Arti- constitutional), affd powers. cle I (1997); grounds, 131 F.3d 353 Genen other Goldsmiths, Cal., 119 F.3d at 1146- tech, In re Creative Regents Inc. v. the Univ. (S.D.Ind.1996) dicta, 47. (stating, F.Supp. University that the could be held liable argument potent in fa The most patent infringement pursuant statutory upholding pro waiver vor of these Amendment). to section 5 of the Fourteenth practical being one: able visions is a Without court, in which has persuasively ex- to sue the state federal re Creative Goldsmiths jurisdiction copyright at least over plained why 5 of the Fourteenth exclusive section 1338, claims, § 28 Chavez fears congressionally- Amendment embrace see U.S.C. cannot remedy protect her required sovereign immunity has no effective waivers of state she authorized, here, literary This fear is overb legislation by in Article I name and work. as lown; retrospective money damages are powers: only constitutional

291 after years one-half Now, and nearly three First, it must to Chavez. unavailable I myself where I find argued, subject to this ease was are states that emphasized bemay sued a state that activities I conclude started. they undertake law when federal copyright and Eleventh court it; after federal by regulated being panel from that them now I think only shields laws.1 trademark Amendment Second, we concluded court. when prematurely in federal sued acted is not Parden; this by the overruled conferred case the Seminole Young doctrine Parte applies. The Ex waiver Parden limitless.14 in which not a case relief, injunctive prospective suits permits authority under has Nevertheless, Congress and Copyright against remedy valuable a Fourteenth 5 specifi- remedy a and Act violations Lanham copy- abrogate state acts.15 by clarification contemplated cally infringement cases.2 and trademark right noted, on suits Third, previously as may be heard contracts trademark and WAIVER govern- Fourth, I. PARDEN the federal courts. state to en- court states may sue ment must “we majority concludes The Finally, laws. these force Con- declare and shoe’ ‘drop the other by con- gap remedial perceived eliminate activities states’ condition cannot gress state jurisdiction ferring concurrent ‘im- upon their law federal by regulable are statutes.16 these enforce courts being sued plied consent’ effort Congress’s condemns Only the disagree. I court”.3 court into federal unconsenting states force its one of to overrule has the Court by regulated doing business price as many years, period aOver decisions.4 Conse- Acts. Copyright and Lanham Parden, has Parden but limited has §§ 1122; 17 U.S.C. § 15 U.S.C. quently, by offered reasons The been not overruled. extent, Chavez’s to that invalid are conclusion justify majority to Houston, a University of against claims unpersuasive. overruled been Because Parden be dismissed. entity, must state necessarily Chavez, re- Court did may be available The remedies other com- Gas in Union decline vote we opinion, White’s ject this Justice outlined re- Semi- remedies, than rather Gas but Union overruled on such the Court ment RE- does dismissal, REVERSE we decision The Seminole case. quire nole consistent proceedings Scalia’s Justice further conclusion MAND support the elevated has been herewith. Gas in Union dissent place, And, there land. law of dissenting: Judge, WISDOM, Circuit doc- Parden waiver limited, for the although of Semi- wake In the dissent. respectfully after Seminole. trine apply this however, does not nole, Parden great this case about thought I have Court. before ease feeling satisfaction. any rarely with deal — years since one-half During Idaho, the three 1. Tribe d’Alene v. Coeur Idaho See 14. opin two issued court has argued, this case -, 117 S.Ct Press, F.3d v. Arte Publico J., concurring ions: Chavez (O’Connor, (1997) Publico I); Cir.1995) (Chavez v. Arte (5th Chavez judgment). concurring in part and II). Cir.1998) (Chavez (5th Press, F.3d 504 permits suits Young Parte of Ex doctrine 15. Prepaid Florida Savings Bank v. College See 2. compliance their to enforce officials state Bd., Exp. F.3d 1343 Postsecondary Education right. See Charles federally-created (Fed.Cir.1998). § Courts Federal Wright, Law Alan II, 139 F.3d at 3. Chavez Nimmer, supra, & Nimmer loss of potential 12.01[E][2], at 12-51. Ex Quijas v. Shearson/American Rodriguez de al- might be lessened adjudication consistent lowing Inc., press only suits over jurisdiction L.Ed.2d 526 entities. against state A. Gas as well as the Parden waiver theory relies, upon which it the Court would have majority The Union position Gas was the expressly. done so Supreme Court product four-justice plurality of a opinion the language knows to use in overruling a (upholding the use by Congress of Article I decision. The Seminole Court expressly powers abrogate sovereign immuni overruled language.9 Union clear Gas In ty) plus separate opinion Justice White’s Dept. Welch v. Highways & Public (based upon doctrine).5 the Parden waiver Transp., when the Court intended to limit expressly Seminole Court overruled Union exp Parden, the reach of the Court did so II, Ga In s.6 Chavez we wrote: “We can ressly.10 The Welch Court wrote: “[T]o the not understand how the Court could have extent that Parden ... is inconsistent with only regard overruled Union Gas to the 4- requirement abrogation of Elev plurality opinion toto, vote and we enth immunity by Congress attempted do not believe such feat.”7 I expressed must be unmistakably clear lan am persuaded now that the Seminole Court Seminole, guage, it is In overruled.”11 how intended this feat. ever, the Court expressly reject did not First, pure mathematics, as a matter of Instead, Parden waiver doctrine. the Court reject Court only needed one “unremarkable, cited Parden for the vote to overrule Gas. In Union the absence completely unrelated, proposition that States (from single of a plurality vote or Justice may waive their sovereign immunity”.12 It White), majority Union Gas would not abe remarkable, indeed, would have been if the position. It was not mathematically neces- Seminole Court had cited Parden to confirm sary reject for the Seminole Court to both that a state waive immuni the plurality opinion Justice sep- White’s ty when the reject Court intended to opinion arate to overrule Union Gas. The manner which the Court found a waiver in wrote, length, Court attacking Parden. the reasoning of the plurality, Gas Union but the Court made no effort to criticize Justice B. reasoning. fact, White’s par- In the Court tially upon relied opinion Justice White’s The Seminole decision does support conclude that the majority Union Gas the view adopted that the Court Justice Sca- entitled to a respect diminished level of un- lia’s Union Gas entirety. in its dissent Pro- principle der the of stare decisis.8 In these Kit Kinports fessor has written on this lack circumstances, it is doubtful that the Semi- support: reject nole Court intended to Justice White’s majority “[T]he Seminole Tribe did not position. even cite or refer to [Justice Scalia’s dis-

If the Seminole reject sent], Court intended to much less fact, endorse it. Justice separate opinion White’s only Union reference to implied waiver doc- Co., 1, Pennsylvania 5. See Gas expressly disagreed Union U.S. with the rationale of the 2273, (1989). 109 S.Ct. plurality.” Id. Justice White's vote was essential for the majority 44, to conclude 1114, 252, Justices 6. 517 U.S. rejected plurality opinion. the Union Gas 9. The Seminole Court wrote: "We feel bound to Press, 504, v. Arte Publico 139 F.3d Chavez wrongly conclude that Union Gas was decided (5th Cir.1998). be, is, and that it should and now overruled.” Id. Seminole, L.Ed.2d at 273 The Seminole Court wrote: 10. 483 U.S. 107 S.Ct. Gas, "Reconsidering the decision Union we conclude policies underlying that none of the at-, require stare 11. Id. decisis our continued adherence L.Ed.2d at 399. holding. has, to its issuance, The decision since its questionable precedential been of value, largely majority because a of the Court L.Ed.2d at 272.

293 waiver den in Seminole opinion majority the trine role. limited proper, consciously sion’s Court that the suggests Tribe con- abrogation the to its decision limited C. majority criti- Tribe Seminole text. The ‘mis- plurality Gas Union cized from suit immune are Although states relying on by precedent’ ... reading Amend- Eleventh holding that its support to Parden immu- that Hans. v. ment Louisiana,16 Congress gave Clause Commerce its may waive A state nity absolute. is not Amend- abrogate to a suit consent immunity and may that states principle The ment. circumstances, Con- Or, in limited court.17 (the is- the Eleventh waive through immunity abrogate state may gress Parden) unrelated’ ‘completely is of sue Waiver legislative legitimate action.18 (the issue doctrine abrogation to the The Semi- theories. separate are abrogation Tribe), and Seminole Gas Union Par- it cited recognized nole Court in Seminole explained Court Tribe.”13 a that proposition the unremarkable den that The decision immunity. notion rejects the its may also waive Kinports Prof. state abrogation position upon the Scalia’s is adopted Justice based in Seminole the Court unilaterally may states dissent not Congress Sealia’s Justice doctrine. the merits. through the exercise immunity waive state that: does powers. I Article Congress’s acknowledge that bottom, then, to “At waive powerless to state is that a suggest not waiver make the Government Federal voluntary action. through its immunity a condition sovereign of state that field in a action the State’s a state that held Parden The substantially regulate voluntary has action. through its waive Feder- acknowledging that as the same agreed who those including justice, Every sover- can eliminate Government dissent, accepted al White’s Justice of Article its exercise immunity in the eign the case disagreement The position. princi- very is, adopt powers I a to effect needed specificity the level —that over just I ple that have “when rejected.”14 concluded majority waiver. exclusively sphere differences leaves a State Scalia concludes Justice into activities abrogation are enters own and waiver Parden between subjects itself regulation, congressional concern “verbal distinctions”15. private if it fully were as inter- regulation a broad is that expresses Scalia Justice dissent, Justice doctrine person waiver Parden pretation corporation.”19 clear for a need position upon the focused around White to an end-run could lead to condition intent Congress’s Congress could statement in Seminole —that accepted upon the industry in an abrogate participation powers state’s Article use its White immunity. Justice of its waiver state’s immunity. wrote: necessarily al- would waivers Parden waiver indicated “[T]he Court decision the Seminole around an end-run low only found immunity will A very limited. waivers Parden because lan- express most ‘the stated Par- where the refinement discussion brief 11; State Pennhurst Amend. U.S Const. 17. Implied Waiver Kinports, Kit 13. After (1998). 89, 99, Halderman, 465 U.S. Hosp. v. & School 793, Tribe, Minn. L.Rev. 82 (1984). 900, 67 L.Ed.2d 79 104 S.Ct. 44, 1, Gas, 491 U.S. Pennsylvania v. Union 14. 44, Florida, U.S. 517 Fla. Tribe 18. Seminole J„ (Scalia, (1989) 2273, 105 L.Ed.2d S.Ct. (1996); 1114, Fitz- L.Ed.2d dissenting). Bitzer, patrick v. (1976). Id. Ala., 377 U.S. Ry. v. Terminal Parden 33 L.Ed. guage, overwhelming or such implica- further, The Court narrowed Parden find- tion text as ing from the would leave no room that the states do not waive their immu- any nity by other reasonable engaging governmental construction.’ If in core func- consequence the automatic of a oper- state This limitation is consistent with the tions.23 requirement ation of a expression railroad interstate of a commerce clear of intent to waive a immunity. By is to be immunity, waiver engaging in functions, core Congress’ bring failure to has shown home to the state no inten- tion, other, way one precise State the or the option nature of its to waive its immunity. impossible merely makes The state shown its ‘intentional relin- operate intent to quishment as a state. or abandonment of a known right privilege’ which must be shown Through repeated refinement of the Par- rights may before constitutional be taken doctrine, den waiver Court has to have been waived.”20 shown that grounded this is doctrine in the waiver, concept abrogation. in these These important. differences views is concepts two “completely majority approach similar is to the abro- unrelated”24 although they have been gation rejected confused approach because Seminole parallel Seminole, their In Congress could waive Eleventh Amendment development.25 the Court acknowledge continued to immunity that a whenever the State acts outside of state immunity, citing waive its governmental its core Parden area. The dissent’s position. Nothing position different, focusing pre- is Seminole upon the tradi- vents a voluntarily state waiving tional from concept of waiver. its Unless the state is immunity by engaging in clearly non-core informed that functions actions will its result in long so as the intent to waive immunity, the immunity loss of is dissent would not clear. “The Court’s decision in knowing voluntary find a waiver of state Tribe breathes implied new life into the sovereign immunity. waiv- doctrine, er furnishing a reason to distin- Justice accepted by White’s view was guish again once implied between cases of Court in Hosp. Atascadero State v. Scanlon. waiver and eases of abrogation.”26 The Atascadero Court found that the state Chemerinsky, Prof. writing had not immunity waived its accept when it before Semi nole, ed federal summarized funds under the Parden's limited Rehabilitation Act role as follows: “[t]he because Act likewise falls short of manifesting a clear partic short, intent condition “In constructive waiver of Eleventh ipation programs funded under the Act virtually nonexis- on a State’s consent waive constitution exist, tent. If it ever will it will be in al Dept. v. High Welch Congress situations where indicates a clear immunity.”21

ways Transp., & Public the Court confirmed intent to make states liable in a federal point when it wrote: “[T]o extent they engage court if particular in a activi- that Parden ... is inconsistent ty, with the re and then a voluntarily state chooses quirement abrogation that an engage in that congressional conduct. The by Congress must be desire to make states liable must be in expressed in unmistakably language, clear language ‘unmistakable in the statute it- is overruled.”22 self and it must be an area where the 199-200, (White, J„ 20. Seminole, Id. at 44, 1114, S.Ct. 1207 dis- 517 U.S. 116 S.Ct. senting). L.Ed.2d at 272. 234, 3142, 171, 21. 473 U.S. 105 S.Ct. 87 L.Ed.2d Kinports, 25. Kit Implied Waiver (1985). After Tribe, 82 Minn. L.Rev. 22. 483 U.S. 399 (1987). Id. See also MCI Corp. Telecommunications v. Co., Telephone Illinois Bell 1998 WL *7 Employees Dept. Health and Welfare (N.D.Ill.1998). Dept. Welfare, Public Health & like waiver to en- choose realistically could state entity operating provided activity.”27 gage suit would railroad interstate doctrine waiver Parden After court.33 Only role. limited same have should func- non-core engaged is not abrogation attempt general A in activi- engage to not it “choose in a tions action a state’s to condition sufficient of use the limitation severe This ty”. immunity. If of waiver on the area non-core to Justice response partial provides Parden a serious sufficient, would allow were it Parden that, through the criticism Scalia’s in circumstances in Seminole around end-run sover- state waive could doctrine, Congress authority to the not did have Congress which not it could where immunity in areas eign of5 immunity section under state abrogate the directly. When immunity abrogate clear, narrow A Amendment. the then, Seminole, it did issued Court de- same the from not suffer does condition is There Parden. necessarily overrule not requiring instance, a condition For fect.34 co-exist.28 to decisions for the two room any state immunity for of waiver the interstate an of operation in the engages D. sufficiently spe- be profit would railroad the of operate is outside profit Publishing for decision a state cific so In the functions. be inter- could governmental profit core railroad state’s interstate however, case, present of voluntary the waiver knowing circumstances aas preted sued to be view Although not consent immunity. did Texas the language The actions. through its under circumstances court the limits severely immunity sovereign state waiver apply, to waive the used waiver would Parden which is written laws trademark copyright and original'position the to its return would doctrine their On absolute, a condition.29 not as with anas confusion entanglement and before unilat- type of face, provisions rejected in these recently doctrine abrogation using immunity sovereign abrogation of is position eral part, this most For Seminole. condemned were powers Article by Prof. Cheme- articulated as that same laws these conclude To Seminole.30 rinsky. toas to the States notification clear provide which not case case present loss result will activities which It is neces- applies. doctrine waiver Parden troubling.31 immunity is sovereign Four- section then, to consider sary, not will waiver that a clear been has Amendment. teenth narrow not a This is lightly.32 found be that similar has concluded commentator 31. One Jurisdiction Chemerinsky, Federal Erwin 27. enacted were not patent laws omitted). provisions in (footnotes (1994) § 7.6 at See doctrine. waiver Parden upon the reliance 13, at 815-9. supra note Kinports, Dobson, Emerging IP Issues See 28. P. Gerald Tribe, 490 PLI/Pat Wake of immune, under not be ... shall "Any State 29. the Constitution the Eleventh doctrine other or under States United Jordan, Edelman 32. See court in Federal immunity, suit sovereign from ” 511(a). ... “Any shall State § U.S.C. ... immune, amendment the eleventh be not or under States the United discussion of the Constitution any factual Obviously, s Parden immunity, sovereign from expressly doctrine other did the law today because good law U.S.C. ...” Federal sovereign suit in immuni- of state waiver provide for the ty. Ewenstein, Tribe: Jacqueline D. See Impuni- Copyi'ights to Pirate Free Are States examples in other provides Kinports (1997) 34. Prof. Arts &J.L. ty?, 22 Colum.-VLA Kin- found. waiver could 101-305, Parden Cong.2d. which 101st Report (citing Senate at 815-9. upon supra note Congress ports, relied (1990) suggest that Sess. attempted waive state Gas Union cases). II. 5 of Section rights FOURTEENTH and trademarks are entitled to the

AMENDMENT protection same patents as under the Due Clause. Process Court continued recognize Congress’s ability abrogate Congress protect those sovereign immunity state through legitimate property rights by enacting legislation under exercises of its under section 5 of the 5. It necessary is not Congress Fourteenth Amendment.35 This Court has thought enacting it was legislation under sec- Congress’s considered authority under sec- long tion 5 Congress “as had such authori- tion 5 in several cases since the Seminole ty objective as an matter”.43 To determine example, decision. For upheld we have Con- whether legisla- has enacted valid gress’s attempts abrogate tion under section we are bound Act,36 Equal Pay Age Discrimina- Supreme City Court’s decision ofBoeme44 Act,37 Employment tion in and the Americans and this Court’s Coolbaugh.45 decision in We rejected Disabilities Act.38We also Con- Congress consider whether pursuing a le- gress’s attempt abrogate to state gitimate objective enacting legislation and in the bankruptcy majority laws.39 The whether there is proportionality congru- and present the case Congress concludes that ence employed between the means to achieve lacks the authority under section 5 to abro- objective that and prevent- the harm to be gate state copyright and trade- ed.46 infringement mark I disagree. cases. Protecting Congress copyright legitimate created and trademark property in- hold- ers infringement terests from copyrights by and an arm of trademarks the state through government a valid legitimate exercise of its is a pow- legislative objec- Article I ers. grants Congress Article I tive under section authority 5. gives Section 5 Con- gress create certain property authority interests that are to enforce the substantive protected by provisions from intrusion the state.40 of the Fourteenth Amendment many years, Over the course of many through appropriate and in legislation. Section 5’s contexts, different copyrights power and trade- enforcement extends to the Due Pro- marks have been treated as a “prop- form of cess of Clause section 1 of the Fourteenth erty”.41 The expressly held Amendment.47 Naturally, protects section 1 patents protected that are property.42 Copy- property interests, including interests 44, 1114, 1155, 35. 517 U.S. 116 (1976), S.Ct. 134 suggest 405 L.Ed.2d at 272-3. protected trademarks are not property is mis- placed. injury Paul involved reputation Louisiana, only. Ussery present (5th 36. v. The State case 150 involves much 431 more F.3d than of Cir.1998). reputation. an interest This case involves an interest created under the Lanham Act. University 37. Scott v. Mississippi, 148 F.3d 493 of (5th Cir.1998). States, Hartford-Empire 42. See Co. v. United 323 386, 415, 373, (1945); 65 S.Ct. 89 L.Ed. 322 Louisiana, Coolbaugh 38. v. 92, State Wright, 136 430 Consolidated Fruit-Jar F.3d Co. v. 94 U.S. (5th Cir.1998). (1876). L.Ed. Fernandez, 39. In the Matter the Estate Ussery, 431, 43. (citing F.3d v. Crawford (5th Cir.1997). F.3d 241 Davis, (8th Cir.1997)). 109 F.3d 1281 134, Kennedy, 151-2, 40. See Arnett v. 416 U.S. Flores, City Boerne v. 521 U.S. (1974); Goldberg L.Ed.2d 15 v. 254, 261-3, Kelly, 397 U.S. L.Ed.2d 287 (5th Cir.1998). 45. 136 F.3d 430 Cross, 41. See John T. Property Intellectual and Id. at 435. Tribe, the Eleventh Amendment After (1998); Ewenstein, DePaul L.Rev. supra note at majority's 115-20. The ‘article,’ provisions reli- "The to which Davis, upon ance refers, Paul v. include the Due Process Clause of the pro- meet must depriva- trademarks, from and copyrights portionality”.51 by the states. infringements pri- two inquiry Pre- Florida proportionality “This Savings Bank College Bd., the threatened Exp. the extent Postsecondary mary Educ. facets: paid scope of the Congress violations, concluded constitutional Circuit Federal remedy or to5 legislation under section steps provided may exercise patent immunity in interests violations.”52 such prevent abrogate state im- Circuit are here protect The Federal seeks Congress eases.48 infringement show, ease premise familiar the facts As ones. begins with portant Elev- trumps trademarks copyrights Amendment Fourteenth value Fourteenth action. state because significantly enth diminished This in time. later adopted to suit making amenable By infringe- decision Court’s to the and trademark copyright led premise sovereign im- abrogate protect attempting allowing ment, Congress Fourteenth from owners munity under trademark wrote: Circuit Federal hands of Amendment. interests of their dilution of Con- interests those “Surely the manner enforcement the same embrace 5 must action. private under section gress protected range of behavior full to achieve Congress chosen means The substantive to violate held Court of type modest; it is objective are its Amendment. 1 of the in section provisions by the Court rejected legislation” “general that reject proposition therefore We suit are States City Boeme.53 is5 section authority under congressional upon infringe they only when federal court of the provision only a certain restricted trademark copyright aof interest Equal Amendment, namely the Fourteenth infringement, for is sued If a holder. Clause.”49 Protection same bewill available remedies Congress allows Amendment Fourteenth The private a against action in an available that equal for both forum a provide infringer. Con- violations. process and due protection of state valid waiver enacted Congress of action cause a federal create gress trade- arid immunity for sovereign patent, for the state against be It cases. infringement mark To infringement.50 or trademark copyright, Seminole, but around end-run allows however, legislation section be valid at-, 117 Boerne, U.S. 53. City 521 Boerne, 521 City Amendment.” Fourteenth City In 641-2. at L.Ed.2d 138 at S.Ct. Boeme, L.Ed.2d at-, at U.S. 5 both use section attempted to Congress 638. scope First of the defining the legislation to enact (Fed.Cir.1998). free exercise 148 F.3d 48. protection Amendment legislation enforceable to make religion and Id at 1-349. 49. Con Court found against the states. -, authority. at Id. its gress exceeded Fitzpatrick is reasoning of "If 1352. Id. at 50. present In the L.Ed.2d protecting S.Ct. case, it must vitality, retain en 5 for however, Congress used pat- as a such property interest well-established Arti Congress used its only. purposes Four- objective under forcement permissible ais ent copy rights in property Savings College to create I Id. cle rights Amendment.”. teenth combine Congress can reasoning majority’s Bank, rejected the and trademarks. Court of the and section authority under Article wrote: this case. a result however, to achieve mark, because Fourteenth cases miss "These of that that, in the absence possible because not be would fact essential they ignore the Bitzer, Fitzpatrick v. subse- enacted combination. Fourteenth (1976) Amendment, unlike Arti- quent the Eleventh determining may, principle ("We I, qualified think expressly cle purpose legislation for 'appropriate immunity." what is Fourteenth provisions enforcing the at 1351. Id. suits private Amendment, provide at 435. Coolbaugh, F.3d constitutionally which officials or state States contexts”). in other impermissible Id. grounded end-run one in the text of the Constitution and prece- well-established

dent.54

I respectfully dissent.

UNITED America, STATES

Plaintiff-Appellee, MORENO-CHAPARRO,

Alfredo

Defendant-Appellant.

No. 97-50641.

United States Appeals, Court of

Fifth Circuit.

Sept. 30, 1998. may argue 54. One that the Seminole Court in- practical have little or no effect. The holding tended its to have more bite than this. States, Court's decision in Muscarello v. United response, you --, I ask are so sure? After the -U.S. Supreme Court issued Bailey (1998), its decision In confirmed that the Court intended for States, United Bailey to have My limited point effect. (1995), public defenders this: what looks like a clear statement of broad across this nation ran arguing to the courts policy issuing from actu- a restrictive definition of "use” in a ally section 924 attempt by be an the Court return a level charge firearms must also limit honesty definition of interpretation to the statutory Otherwise, "carry”. they argued, Bailey would language. constitutional

Case Details

Case Name: Denise Chavez, United States of America, Intervenor v. Arte Publico Press Nicolas Kanellos University of Houston

Court Name: Court of Appeals for the Fifth Circuit

Date Published: Oct 1, 1998

Citation: 157 F.3d 282

Docket Number: 93-2881

Court Abbreviation: 5th Cir.