United States Court of Appeals,
Fifth Circuit.
No. 93-2881.
Denise CHAVEZ, Plaintiff-Appellee,
v.
ARTE PUBLICO PRESS, et al., Defendants-Appellants.
Aug. 1, 1995.
Appeal from the United States District Court for the Southern District of Texas.
Before WISDOM, JONES and EMILIO M. GARZA, Circuit Judges.
EDITH H. JONES, Circuit Judge:
The University of Houston and one of its employees appeal the
denial of their motions to dismiss an action brought under the
Copyright and Lanham Acts. Appellants principally contend that the
Acts are unconstitutional under the Eleventh Amendment because they
purport to override state immunity and authorize suits in federal
court against the state for violation of the Acts. This would
appear to be a compelling defense, were it not for the vicissitudes
of Supreme Court interpretation of the Amendment. As the Court's
decisions now stand, the University's claim of sovereign immunity
must fail, although its employee Kanellos prevails on qualified
immunity.
BACKGROUND1
Denise Chavez, the plaintiff/appellee, is a "nationally
1 Because this is an appeal from the denial of a motion to dismiss under Federal Rule of Civil Procedure 12(b)(6) for failure to state claim on which relief may be granted, we take as true the facts alleged in the Complaint.
1 renowned playwright and dramatist ... with a unique and valuable
reputation as a commentator on cultural issues regarding women and,
in particular, Hispanic women." Chavez has resided in New Mexico
at all times relevant to this lawsuit.
Arte Publico Press, the defendant/appellant, is a component
part of the University of Houston and legally indistinguishable
from the University. The University is owned and operated by the
State of Texas. Nicolas Kanellos, also a defendant/appellant, is
a University employee who at all times relevant acted on its
behalf.
In July 1984, Chavez and the University entered into a
contract for publication of her books. A year later, the
University agreed to do a first printing of The Last of the Menu
Girls, a collection of Chavez's short stories. The book was
published in 1986, and the copyright was registered in Chavez's
name as author and owner. Twice in later years, the parties agreed
on additional publishing contracts for The Last of the Menu Girls,
each of which provided for a specified number of copies to be
printed. Kanellos signed the contracts on behalf of the
University.
In late 1991 and early 1992, Chavez, dissatisfied that the
University had failed to correct errors in the earlier printings,
refused to permit the University to print any more copies than
agreed to in the 1991 contract. On or about October 2, 1992,
however, the University asserted to Chavez that the 1991 contract
did not limit the number of copies it could print and declared its
2 intention to print 5,000 more copies of the book.2
During this time period, the University also published an
anthology of plays entitled Shattering the Myth. Chavez was
identified in a University catalog as the selector of the plays.
Chavez does not dispute this statement, but she objects that her
identification as selector is a misrepresentation of sponsorship in
violation of her right to publicity.
Chavez filed this action in 1993 in federal court. Her
complaint alleges that the University and Kanellos, in both his
official and individual capacities, infringed her copyright in her
book, violated the Lanham Act in naming Chavez as the selector of
the plays without her authority, and violated her state law right
to publicity. Chavez seeks a declaratory judgment securing her
rights under the contract, as well as damages, attorneys' fees, and
an injunction against the University. Chavez invokes federal
question and supplemental jurisdiction, but not diversity
jurisdiction.
The University moved to dismiss on behalf of itself and
Kanellos for failure to state a claim, resting inter alia, on
Eleventh Amendment sovereign immunity. Kanellos also asserted his
qualified immunity. The district court denied the motions,
allowing the lawsuit to proceed. The University and Kanellos filed
a timely interlocutory appeal on these issues. Puerto Rico
2 The 1991 contract provides that the University shall have the exclusive right publish the book for a term of at least five years and that only the University may terminate the contract during that term. The addendum to the contract specifies that the number of copies to be published is 2,000 trade paperbacks.
3 Aqueduct & Sewer Auth. v. Metcalf & Eddy, Inc., --- U.S. ----, ----
, 113 S.Ct. 684, 689, 121 L.Ed.2d 605 (1993).
DISCUSSION
A State's immunity from suit in federal court has a turbulent
past, an enigmatic present, and an uncertain future. Our
commission is to ascertain the current state of the law, guided by
the historical evolution of sovereign immunity. The future of such
immunity will ultimately be resolved by the Supreme Court, perhaps
in a case pending this term. See Seminole Tribe of Florida v.
State of Florida, 11 F.3d 1016 (11th Cir.1994), cert. granted, ---
U.S. ----, 115 S.Ct. 932, 130 L.Ed.2d 878 (1995).
The highlights of sovereign immunity jurisprudence provide the
necessary context for this discussion. The Constitution did not
originally confer explicit immunity on the States against suits in
federal court. Article III, section 2 extends the federal judicial
power to controversies "between a State and Citizens of another
State." In 1793, the Supreme Court exercised this grant of power
and assumed original jurisdiction over a suit brought by a citizen
of South Carolina against the State of Georgia. Chisholm v.
Georgia, 2 Dall., 419, 1 L.Ed. 440 (1793). This decision "created
such a shock of surprise that the Eleventh Amendment was at once
proposed and adopted." Monaco v. Mississippi, 292 U.S. 313, 325,
54 S.Ct. 745, 749, 78 L.Ed. 1282 (1934).
The Eleventh Amendment provides:
"The judicial power of the United States shall not be construed to extend to any suit in law or equity, commenced or prosecuted against one of the United States by Citizens of another State, or by Citizens or Subjects of any Foreign
4 State."
That the Amendment's language overruled Chisholm was never
disputed; whether the Amendment also affirmed the existence of
immunity beyond the text, as later recognized in Hans v. Louisiana,
134 U.S. 1, 10 S.Ct. 504, 33 L.Ed. 842 (1890), has been the subject
of intense debate.
In Hans, the Supreme Court held that the scope of sovereign
immunity was not limited by the text of the Eleventh Amendment.
Rather, the Amendment embodied the broader and more fundamental
constitutional concept of state immunity from suit in federal court
even against suits brought by its own citizens. A review of the
constitutional debates concerning the scope of Article III
persuaded the Court that federal jurisdiction over suits against
unconsenting states "was not contemplated by the Constitution when
establishing the judicial power of the United States." Id. at 15,
10 S.Ct. at 507.3 Although repeatedly called into question by some
3 Thirty years later, the Court succinctly summarized its Eleventh Amendment jurisprudence after Hans:
"That a State may not be sued without its consent is a fundamental rule of jurisprudence having so important a bearing upon the construction of the Constitution of the United States that it has become established by repeated decisions of this court that the entire judicial power granted by the Constitution does not embrace authority to entertain a suit brought by private parties against a State without consent given: not one brought by citizens of another State, or by citizens of a foreign State, because of the Eleventh Amendment; and not even one brought by its own citizens, because of the fundamental rule of which the Amendment is but an exemplification."
Ex Parte State of New York, 256 U.S. 490, 497, 41 S.Ct. 588, 589, 65 L.Ed. 1057 (1921).
5 of the Justices, Hans and its progeny remain the law. However, a
State's general immunity from suit in federal court marks only the
beginning of the inquiry.
A State is free to waive its immunity and consent explicitly
to suit in federal court. See e.g., Pennhurst State School & Hosp.
v. Halderman, 465 U.S. 89, 99, 104 S.Ct. 900, 907, 79 L.Ed.2d 67
(1984); Atascadero State Hosp. v. Scanlon, 473 U.S. 234, 238, 105
S.Ct. 3142, 3145, 87 L.Ed.2d 171 (1985). Not only may the state
expressly waive its immunity, but according to some opinions from
the Supreme Court, waiver may occur in two other instances relevant
to this case. The first theory of non-express waiver has been
designated as the "plan of the [constitutional] convention" waiver;
the second may be called "implied" or "Parden " waiver.4
The "plan of the convention" theory of state waiver of
sovereign immunity was first highlighted in Monaco v. Mississippi,
292 U.S. 313, 54 S.Ct. 745, 78 L.Ed. 1282 (1934). The Court
explained that "States of the Union, still possessing attributes of
sovereignty, shall be immune from suits, without their consent,
save where there has been a "surrender of this immunity in the plan
of the convention.' The Federalist No. 81." Id. at 322-23, 54
S.Ct. at 748.5 According to the plan of the convention theory, by
4 It has been held that in ratifying the Fourteenth Amendment, states waived immunity from suits authorized by Congress under section five of the Fourteenth Amendment. Fitzpatrick v. Bitzer, 427 U.S. 445, 456, 96 S.Ct. 2666, 2671, 49 L.Ed.2d 614 (1976). Our resolution of this case does not warrant analysis under the Fourteenth Amendment. 5 In Monaco, the Court ultimately held that because there existed "no ground upon which it can be said that any waiver or
6 ratifying the Constitution, States necessarily surrendered certain
of their powers to the federal government. Implicit in this
surrender was a consent to suit in federal court in certain cases.
The Supreme Court has found such a waiver in two contexts: suits
by Sister States, South Dakota v. North Carolina, 192 U.S. 286,
318, 24 S.Ct. 269, 275, 48 L.Ed. 448 (1904), and suits by the
United States, United States v. Texas, 143 U.S. 621, 12 S.Ct. 488,
36 L.Ed. 285 (1892). Whether the States waived immunity from suits
by private parties by ratifying the Constitution is not so clear.
As will be discussed, the Supreme Court was confronted with this
very question in Pennsylvania v. Union Gas, 491 U.S. 1, 109 S.Ct.
2273, 105 L.Ed.2d 1 (1989).
The second form of non-express waiver has been deemed to occur
when a State participates for profit in a particular market or
industry, and Congress, acting pursuant to the powers conferred
upon it in Article I of the Constitution, has explicitly
conditioned that participation on a State's waiver of immunity from
suit. Thus, in Parden v. Terminal Ry. of Ala. State Docks Dept.,
377 U.S. 184, 84 S.Ct. 1207, 12 L.Ed.2d 233 (1964), "Congress
conditioned the right to operate a railroad in interstate commerce
upon amenability to suit in federal court as provided by the
[Federal Employers' Liability Act] ..." Id. at 192, 84 S.Ct. at
1213. See also Employees of Dept. of Public Health & Welf. v.
consent by a State of the Union has run in favor of a foreign State," Mississippi had not waived its immunity from suit by the foreign State of Monaco. Monaco, 292 U.S. at 330, 54 S.Ct. at 751.
7 Missouri, 411 U.S. 279, 285, 93 S.Ct. 1614, 1618, 36 L.Ed.2d 251
(1973) (in enacting the Fair Labor Standards Act, Congress did not
condition operation of a not-for-profit State hospital on waiver of
State immunity); Atascadero State Hosp. v. Scanlon, 473 U.S. 234,
247, 105 S.Ct. 3142, 3149-50, 87 L.Ed.2d 171 (1985) ("The Act ...
falls far short of manifesting a clear intent to condition
participation in the programs funded under the Act on a State's
consent to waive its constitutional immunity.").
The State of Texas contends that neither theory of non-express
waiver of sovereign immunity is viable against it in this case.
Although Congress amended both the Copyright and Lanham Acts
specifically to abrogate states' immunity from suit in federal
court,6 Texas asserts that these enactments violate recent Supreme
6 The Copyright Act provides in pertinent part:
In general, any State, any instrumentality of a State, and any officer or employee of a State or instrumentality of a State acting in his official capacity, shall not be immune, under the Eleventh Amendment of the Constitution or under any doctrine of sovereign immunity, from suit in Federal Court by any person ... for a violation of any of the exclusive rights of the copyright owner provided by ... this Title.
17 U.S.C. § 511(a).
The Lanham Act provides in pertinent part:
Any State, any instrumentality of a State or any officer or employee of a State or instrumentality of a State acting in his official capacity, shall not be immune, under the Eleventh Amendment of the Constitution or under any doctrine of sovereign immunity, from suit in Federal Court by any person ... for any violation under this chapter."
15 U.S.C. § 1122.
8 Court Eleventh Amendment jurisprudence and are ineffective. First,
in Blatchford v. Native Village of Noatak, 501 U.S. 775, 111 S.Ct.
2578, 115 L.Ed.2d 686 (1991), and earlier cases, the Court
allegedly closed the door on the "plan of the convention" theory of
non-express waiver. Second, the State relies upon Welch v. Texas
Dept. of Highways & Public Transportations, 483 U.S. 468, 107 S.Ct.
2941, 97 L.Ed.2d 389 (1987), which, it contends, overruled Parden
v. Terminal Ry. of Alabama Docks Dept., 377 U.S. 184, 84 S.Ct.
1207, 12 L.Ed.2d 233 (1964). In overruling Parden, the Court
rejected the theory that Congress may overcome a state's immunity
from suit in federal court by legislating pursuant to Article I.
While it appears that the state's first argument is correct,
and the plan of the convention theory has never been accepted by
more than four justices in any case, we nevertheless conclude that
Texas's interpretation of Parden is in error under current caselaw.
To explain these conclusions it is necessary to return to
Pennsylvania v. Union Gas, supra, where the issue presented was
whether Congress had the intent and power to abrogate state
immunity from private suit in federal court for violation of a
federal environmental statute. A five-member majority of the Court
held that the Comprehensive Environmental Response, Compensation,
and Liability Act of 1980 (CERCLA), as amended by the Superfund and
Reauthorization Act of 1986 (SARA), unmistakably conveyed
Congress's intent to render States liable in federal court for
9 cleanup costs recoverable under CERCLA.7 Union Gas, 491 U.S. at 8,
109 S.Ct. at 2278. On the issue of congressional authority to
compel a waiver, however, Justice Brennan mustered only a plurality
for his oft-stated view8 that the states waived their immunity in
the "plan of the convention." Applying their plan of the
convention theory, Brennan's plurality held that Congress, acting
pursuant to the Commerce Clause contained in Article I, section 8,
was empowered to abrogate9 Pennsylvania's sovereign immunity and
authorize a private suit against the State in federal court. Four
other justices vehemently dissented against the plan of the
convention theory of waiver. Id. at 30-45, 109 S.Ct. at 2297-2304
(Scalia, J., concurring in part and dissenting in part).
Justice White cast the tie-breaking vote favoring abrogation
of state sovereign immunity, although he also wrote on behalf of
7 Justices Marshall, Blackmun, Stevens, and Scalia joined this portion of Justice Brennan's opinion. 8 See Employees of Dept. of Public Health & Welf. v. Missouri, 411 U.S. 279, 317-18, 93 S.Ct. 1614, 1634, 36 L.Ed.2d 251 (1973) (Brennan, J., dissenting); Edelman v. Jordan, 415 U.S. 651, 687, 94 S.Ct. 1347, 1368, 39 L.Ed.2d 662 (1974) (Brennan, J., dissenting); Atascadero State Hosp. v. Scanlon, 473 U.S. 234, 279-80, 105 S.Ct. 3142, 3166, 87 L.Ed.2d 171 (1985) (Brennan, J., dissenting); Welch v. Texas Dept. of Highways and Public Trans., 483 U.S. 468, 504-09, 107 S.Ct. 2941, 2962-65, 97 L.Ed.2d 389 (1987) (Brennan, J., dissenting). 9 The plurality's term "abrogate" appears to be a misnomer. If the States waived their immunity in the plan of the convention, there would be no immunity to abrogate. See, Employees of Dept. of Public Health & Welf. v. Missouri, 411 U.S. 279, 282 n. 1, 93 S.Ct. 1614, 1616 n. 1, 36 L.Ed.2d 251 (1973). If, on the other hand, the States did not waive their immunity, Congress would have no power to abrogate it. See Puerto Rico, -- - U.S. ----, ---- - ----, 113 S.Ct. 684, 687-88. But to be consistent with the Justices' terminology, this opinion will also use "abrogate."
10 three other justices to dissent from the majority holding that
CERCLA, as amended by SARA, was unmistakably clear in its intent to
abrogate State immunity from suit in federal court. In a single
terse paragraph, Justice White concurred individually in the
Brennan plurality's conclusion that Congress has the power to
abrogate sovereign immunity under its Article I powers, but he
repudiated10 the plurality's reasoning and reaffirmed his allegiance
to Hans. Id. at 56-57, 109 S.Ct. at 2295-96 (White, J., concurring
in part and dissenting in part).11
Justice White's concurrence must be taken on its face to
disavow the plan of the convention theory of waiver. This
10 Earlier in his concurring opinion, Justice White also voiced his disagreement with the reasoning of the plurality. Id. at 45, 109 S.Ct. at 2289 (White, J., concurring in part and dissenting in part). 11 Justice White's conclusion on this issue in Union Gas, stated in full, is as follows:
My view on the statutory issue has not prevailed, however, a majority of the Court has ruled that the statute, as amended, plainly intended to abrogate the immunity of the States from suit in the federal courts. I accept that judgment. This brings me to the question whether Congress has the constitutional power to abrogate the States' immunity.[FN8] In that respect, I agree with the conclusion reached by Justice Brennan in Part III of his opinion, that Congress has the authority Under Article I to abrogate the Eleventh Amendment immunity of the States, although I do not agree with much of his reasoning. [FN8] As a preliminary matter, I reiterate my view that for the reasons stated by the plurality in Welch v. Texas Dept. of Highways, supra, at 478-88, 107 S.Ct., at 2944-54, Hans v. Louisiana, 134 U.S. 1, 10 S.Ct. 504, 33 L.Ed. 842 (1890), should not be overruled.
Union Gas, 491 U.S. at 57, 109 S.Ct. at 2296 & n. 8 (White, J., concurring in part and dissenting in part).
11 interpretation is consistent with his position in Eleventh
Amendment cases decided before and after Union Gas, as Justice
White has repeatedly parted company from Justice Brennan's attempts
to engraft a plan of the convention theory of waiver into the
Constitution. See, e.g., Parden, 377 U.S. at 198-99, 84 S.Ct. at
1216 (White, J., dissenting from Justice Brennan's theory that the
states surrendered a portion of their sovereignty when they granted
Congress the power to regulate commerce); Employees of Dept. of
Public Health & Welfare v. Missouri, 411 U.S. 279, 93 S.Ct. 1614,
36 L.Ed.2d 251 (1973); Edelman v. Jordan, 415 U.S. 651, 94 S.Ct.
1347, 39 L.Ed.2d 662 (1974); Port Authority Trans-Hudson Corp. v.
Feeney, 495 U.S. 299, 110 S.Ct. 1868, 109 L.Ed.2d 264 (1990).
The plan of the convention theory thus received only four
votes of approbation in Union Gas and failed to become the
constitutional law of the land. Despite his repeated efforts to
secure a fifth vote in other cases, Justice Brennan, concurring in
Feeney, supra, essentially conceded that the plan of the convention
theory of waiver had never succeeded in capturing the Court's
majority. Feeney, 495 U.S. at 310-11, 110 S.Ct. at 1875-76. And
if further proof be needed, the Court's opinion in Blatchford,
decided after Union Gas and concurred in by Justice White,
pointedly observed that in only two classes of cases had the Court
recognized that states waived immunity from suit in the plan of the
convention—suits by sister states and suits by the United States.
Blatchford, 501 U.S. at 780, 111 S.Ct. at 2582. No mention was
made of waiver or abrogation of immunity in the face of
12 congressional action pursuant to Article I.
On this basis, we therefore agree with the state of Texas
that Chavez may not defend the express abrogation of state
sovereign immunity in the Copyright and Lanham Acts by reference to
a plan of the convention theory of waiver.12
In uneasy juxtaposition, however, with his (and the Court's)
disavowal of the plan of the convention theory of waiver stands
Justice White's conviction that Congress may under some
circumstances require state waiver of immunity in federal court as
the price for conducting business regulated by Congress. He first
articulated this position, which includes a requirement that
Congress must expressly abrogate state sovereign immunity, in
Parden, supra:
Only when Congress has clearly considered the problem and expressly declared that any State which undertakes given regulable conduct will be deemed thereby to have waived its immunity should courts disallow the invocation of this defense.
Parden, 377 U.S. at 198-99, 84 S.Ct. at 1216 (White, J.,
dissenting).
He later joined in an opinion that limited the reach of Parden as
follows:
12 Chavez urges this court to mechanically apply the holding of Peel v. Florida, 600 F.2d 1070 (5th Cir.1979), in which we found a waiver in the plan of the convention for legislation passed pursuant to Congress' Article I war powers. Id. at 1080. However, since Peel was decided, the intervening Supreme Court decisions cited herein have rejected this theory of waiver. Accord Seminole Tribe of Florida v. Florida, 11 F.3d 1016 (11th Cir.1994), cert. granted, --- U.S. ----, 115 S.Ct. 932, 130 L.Ed.2d 878 (1995) (Judge Tjoflat, the author of both Peel and Seminole Tribe, does not follow Peel presumably because of the intervening Supreme Court decisions).
13 The Parden case in final analysis turned on the question of waiver, a majority of the Court holding that it was a federal question since any consent of the State to suit did not arise from an act "wholly within its own sphere of authority" but in the area of commerce, which is subject to pervasive federal regulation.
Employees of Dept. of Public Health and Welfare v. Missouri, 411
U.S. 279, 284, 93 S.Ct. 1614, 1617, 36 L.Ed.2d 251 (1973). The
Court there also noted that Parden involved a railroad business run
by the State of Alabama for profit "in the area where private
persons and corporations normally ran the enterprise." 411 U.S.
284, 93 S.Ct. at 1617.
Finally, Justice White concurred in an opinion for a
five-member majority that overruled Parden "to the extent that [it]
is inconsistent with the requirement that an abrogation of Eleventh
Amendment immunity by Congress must be expressed in unmistakably
clear language." Welch v. Texas Dept. of Highways & Public
Transp., 483 U.S. 468, 477, 107 S.Ct. 2941, 2948, 97 L.Ed.2d 389
(1987). But Welch significantly declined "to consider the validity
of the additional holding in Parden, that Congress has the power to
abrogate the State's Eleventh Amendment immunity under the Commerce
Clause to the extent that the States are engaged in interstate
commerce." Id. at 477 n. 8, 107 S.Ct. at 2948 n. 8.
From Justice White's writing and concurrences in these earlier
cases, we infer the meaning of his vote in Union Gas in favor of
congressional abrogation of state immunity. The underlying suit in
Union Gas alleged that Pennsylvania caused or contributed to the
toxic release when it was excavating a creek for purposes of flood
control. Union Gas, 491 U.S. at 5, 109 S.Ct. at 2277. Justice
14 White evidently decided that if the majority's interpretation of
the environmental statutes prevailed, that is, if Congress
expressly determined to render states suable in federal court for
cleanup costs, Congress had the power to do so under the Commerce
Clause because, as in Parden, the states had voluntarily engaged in
such regulated activities.
In the first section of his concurrence, Justice White
highlights the portion of CERCLA, as amended by SARA, that exempts
from liability costs incident to involuntary and emergency
ownership by the State, except when the State has "caused or
contributed" to the toxic release. Id. at 49-51 & n. 3, 109 S.Ct.
at 2292-93 & n. 3 (White, J., concurring in part and dissenting in
part). That Justice White determined that this affirmative conduct
operated as an implied waiver of State immunity is suggested in a
footnote. White posits:
But under § 9601(20)(D), state and local governments are liable only if they have "caused or contributed " to a release of toxic materials. If § 9601(20)(D) is the source of the Eleventh Amendment waiver, and if, as the Court contends, its provisions are meant to address all state and local governments that own or operate toxic sites, then perhaps Congress abrogated the Eleventh Amendment only far enough to make States liable under this less stringent rule—whether they are voluntary or involuntary owners of a site.
Id. at 53 n. 5, 109 S.Ct. 2292 n. 5. (emphasis added).
Justice White later adds, "Congress may have reasoned that
while state and local governments that are involuntary owners
should be exempted from liability under CERCLA, those that actually
cause subsequent discharges should be liable under the statute ..."
Id. at 54 n. 6, 109 S.Ct. at 2294 n. 6 (White, J., concurring in
15 part and dissenting in part) (emphasis added). Therefore, Justice
White, believing that for every Congressional abrogation under the
Commerce Clause there must be an accompanying State waiver,
apparently found an implicit waiver, similar to that in Parden,
inherent in Pennsylvania's alleged conduct which caused or
contributed to the toxic release.13 Justice White's view, as the
fifth vote for abrogation of sovereign immunity in Union Gas, must
be taken as that of the Court. See, e.g., Schlup v. Delo, --- U.S.
----, ----, 115 S.Ct. 851, 877, 130 L.Ed.2d 808 (1995).
In summary, applying the Supreme Court's current Eleventh
13 Additional circumstantial supporting evidence that this was Justice White's theory of the case is found in Justice Scalia's dissent.
After discussing why he and three of his colleagues rejected the plurality's application of the plan of the convention waiver to the Article I, section 8 context, Justice Scalia moves to the other potentially applicable type of waiver recognized by the Court, that of implicit waiver under Parden. As framed by Justice Scalia, the issue was whether, by its actions, "Pennsylvania voluntarily assumed the state liability for private suit" contained in CERCLA. Id. at 42, 109 S.Ct. at 2303 (Scalia, J., concurring in part and dissenting in part). Recognizing that the implicit waiver theory in Parden had not yet been overruled, Justice Scalia declared that the time to do so had arrived. Id. at 43, 109 S.Ct. at 2303 (Scalia, J., concurring in part and dissenting in part). He implicitly criticized Justice White's position: "[T]o acknowledge that the Federal Government can make the waiver of state sovereign immunity a condition to the State's action in a field that Congress has authority to regulate is substantially the same as acknowledging that the Federal Government can eliminate state sovereign immunity in the exercise of its Article I powers—that is, to adopt the very principle I have just rejected." Id. at 44, 109 S.Ct. at 2304 (Scalia, J., concurring in part and dissenting in part). Justice Scalia would have had little reason to address Parden waiver had he not thought it relevant to Justice White's position.
16 Amendment jurisprudence, we must conclude that although the implied
waiver found in Parden has been narrowed considerably and called
into question, it has never been overruled and, indeed, seems to
have motivated Justice White's crucial fifth vote for concurrence
in Union Gas. Blatchford did not touch on the Parden theory of
waiver or implied consent. Until the Supreme Court determines
otherwise, we must conclude that Congress is authorized expressly
to compel states to waive sovereign immunity from private suits in
federal court under the narrow circumstances found in Parden, i.e.,
when the states opt to conduct business for profit in areas where
Congress conditions participation upon waiver of immunity.
Applying the foregoing discussion of states' immunity to this
case is not difficult. Both the Copyright Act and the Lanham Act
represent valid exercises of Congressional power under the
Copyright Clause, Article I, section 8, clause 8 of the
Constitution. Further, both of these statutes were recently
amended to express in clear and unmistakable language Congress's
intent to abrogate State immunity from suit, as required by
Atascadero State Hosp. v. Scanlon, 473 U.S. 234, 238, 105 S.Ct.
3142, 3145, 87 L.Ed.2d 171 (1985). Although we are aware of no
case that specifically holds that laws passed pursuant to the
Copyright Clause can abrogate State immunity, there is no
principled reason to distinguish between this and other Article I,
section 8 powers entrusted to Congress. Accord Union Gas, 491 U.S.
at 42, 109 S.Ct. at 2303 (Scalia, J., concurring in part and
dissenting in part). Since Texas has not expressly waived its
17 immunity by statute or otherwise, the remaining question is whether
Texas impliedly consented to suit by knowingly participating in the
publishing business, in which Congress has expressly conditioned
states' activity on a waiver of sovereign immunity.
Language intended to abrogate State immunity was added to the
Copyright Act effective November 15, 1990, see note 6, supra, the
amendment responded to court decisions holding that the absence of
clear and unmistakable language precluded waiver of state immunity
under the previously-discussed Supreme Court cases. See, e.g., BV
Engineering v. Univ. of Cal., Los Angeles, 858 F.2d 1394, 1396 (9th
Cir.1988). Chavez and the University entered into a contract
authorizing publication of The Last of the Menu Girls in early
1991. According to the Complaint, the University notified Chavez
in October, 1992 of its intent to publish more copies of the book
than authorized in the contract. Chavez alleges that the
University has published and distributed the additional copies and
in so doing has infringed upon her copyright. The University's
conduct in alleged violation of the agreement occurred after the
1990 amendment of the Copyright Act. Therefore, the University had
notice that its continued participation in the publishing business
for profit was conditioned by Congress upon a waiver of its
immunity from suit in federal court for violations of the Copyright
Act. What is left of Parden governs this suit. Accordingly,
Chavez may proceed with her lawsuit against the University and
Kanellos in his official capacity for alleged violations of the
Copyright Act.
18 Unmistakably clear language intended to abrogate State
immunity was also added to the Lanham Act effective October 27,
1992. See note 6, supra. The Complaint alleges that the
University violated the Lanham Act when it published, without
Chavez's consent, a catalog advertisement of a book entitled
Shattering the Myth, which the catalog described as a collection of
plays selected by Chavez. According to the Complaint, this catalog
was published in or about September 1992—one month before the
abrogation language was added to the Act. To the extent that the
Complaint seeks redress for violations that allegedly occurred
before the amendment was enacted, the State is immune. The State
is not immune, however, from any action or relief sought by Chavez
concerning conduct that occurred after the effective date of the
amendment, when the University is deemed to have had notice of its
contents.
Chavez conceded in oral argument that the abrogation of
immunity in the Copyright Act and Lanham Act does not extend to
state law causes of action. Her state law "right to publicity"
cause of action is thus barred against the University and Kanellos
in his official capacity.
We now turn to Kanellos's contention that he is qualifiedly
immune from suit. Qualified immunity shields from liability
government officials performing discretionary functions "as long as
their actions could reasonably have been thought consistent with
the rights they are alleged to have violated." Anderson v.
Creighton, 483 U.S. 635, 638, 107 S.Ct. 3034, 3038, 97 L.Ed.2d 523
19 (1987); see also Malley v. Briggs, 475 U.S. 335, 341, 106 S.Ct.
1092, 1096, 89 L.Ed.2d 271 (1986) (qualified immunity protects "all
but the plainly incompetent or those who knowingly violate the
law"). This immunity is not merely immunity from liability, but is
also immunity from suit, Siegert v. Gilley, 500 U.S. 226, 231, 111
S.Ct. 1789, 1793, 114 L.Ed.2d 277 (1991), and it is effectively
lost if a case is erroneously permitted to go to trial. Sorey v.
Kellett, 849 F.2d 960, 961 (5th Cir.1988).
The dispositive question is "whether an objectively reasonable
official would understand that the alleged improper actions were
unlawful." Del A. v. Edwards, 855 F.2d 1148, 1151 (5th Cir.1988).
The unlawful act Kanellos is alleged to have committed was
authorizing the printing of copies of Chavez's book in violation of
the Copyright Act. However, paragraph 14 of plaintiff's Complaint
concedes that the contractual provision relating to the duration of
the publishing license is ambiguous. The contract itself, appended
to the plaintiff's Complaint, confirms this ambiguity. Because the
licensing contract was reasonably susceptible to two
interpretations, one of which renders Kanellos's alleged act
perfectly legal, he is entitled to qualified immunity. See
Anderson, 483 U.S. at 641, 107 S.Ct. at 3040 (officer entitled to
qualified immunity if reasonable officer could have believed
actions were lawful in light of information possessed).
Neither the Complaint nor plaintiff's appellate brief clearly
states that Chavez is asserting causes of action against Kanellos
in his individual capacity under the Lanham Act and for violating
20 state law privacy rights. Therefore, because plaintiff has failed
to allege facts which would enable her to recover against Kanellos
in his individual capacity, he is entitled to qualified immunity.
See Elliott v. Perez, 751 F.2d 1472, 1473 (5th Cir.1985).
CONCLUSION
For the foregoing reasons, we AFFIRM the district court's
denial of sovereign immunity for actions of the University
undertaken after the amendments to the Copyright and Lanham Acts.
We REVERSE the finding that the University may be sued for invasion
of state law privacy rights and REMAND with instructions to dismiss
this cause of action. We also REVERSE the denial of qualified
immunity for Kanellos and REMAND with instructions to dismiss all
causes of action against him in his individual capacity.
AFFIRMED in part, REVERSED and REMANDED in part.