Canada Hockey v. Texas A&M Univ

Case: 20-20503 Document: 00516006581 Page: 1 Date Filed: 09/08/2021

United States Court of Appeals

for the Fifth Circuit

United States Court of Appeals

Fifth Circuit

FILED

September 8, 2021

No. 20-20503 Lyle W. Cayce

Clerk

Canada Hockey, L.L.C., doing business as Epic Sports;

Michael J. Bynum,

Plaintiffs—Appellants,

versus

Texas A&M University Athletic Department; Alan

Cannon; Lane Stephenson, in his individual capacity,

Defendants—Appellees.

Appeal from the United States District Court

for the Southern District of Texas

USDC No. 4:17-CV-181

Before Owen, Chief Judge, Smith and Graves, Circuit Judges.

James E. Graves, Jr., Circuit Judge:*

Michael J. Bynum and his publishing company sued Texas A&M

University and its employees after they published a part of Bynum’s

forthcoming book without permission. Relevant here, the district court

*

Pursuant to 5th Circuit Rule 47.5, the court has determined that this

opinion should not be published and is not precedent except under the limited

circumstances set forth in 5th Circuit Rule 47.5.4.

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No. 20-20503

dismissed all claims against Texas A&M on state sovereign immunity

grounds and those against two Texas A&M employees for failure to state a

claim. We AFFIRM.

I. Background

For purposes of this appeal, we accept the factual allegations stated in

the complaint as true. See, e.g., Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009).

Michael J. Bynum is a sportswriter and editor that operates his own

publishing company, Canada Hockey LLC d/b/a Epic Sports (“Epic

Sports”). In 1980, Bynum became interested in the “12th Man” lore while

working on his first book about Texas A&M University’s (TAMU) football

program. Plaintiffs describe the 12th Man story as follows:

The University’s now famous 12th Man tradition was inspired

by the actions of E. King Gill at the 1922 football game known

as the “Dixie Classic.” Gill, a squad player for A&M’s football

team, who was already training with the university’s basketball

team, was up in the press box watching his team face the then

top-ranked Prayin’ Colonels of Centre College, when he was

waved down to the sideline before halftime to suit up in case

his injured team ran out of reserve players. Gill stood on the

sideline, ready to play, for the remainder of the game.

Gill's commitment to step up for his team when in need later

became a legend that was passed down from generation to

generation of Aggies. Today, the 12th Man tradition is a symbol

of the Aggies’ unity, loyalty, and willingness to serve when

called upon to do so, and is woven into many aspects of life at

A&M.

In 1990, TAMU registered “12th Man” as a trademark and has since

aggressively enforced it.

Intrigued by the story, Bynum decided to write about Gill and his

impact on TAMU’s football program for a forthcoming book titled 12th Man.

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For many years, Bynum researched Gill and the 12th Man story, including

reviewing primary documents, visiting relevant locations, and conducting

interviews with personnel in TAMU’s Athletic Department. The personnel

included Brad Marquardt, an Associate Director of Media Relations, and

Alan Cannon, an Assistant Athletic Director for Media Relations. Marquardt

reported to Cannon and managed the Athletic Department’s official Twitter

account dedicated to its football program (@AggieFootball). Cannon handled

media relations for all sports programs in the Athletic Department and

managed the department’s official website. Eventually, Bynum hired Whit

Canning to write a short biography about Gill (the “Gill Biography”), titled

“An A&M Legend Comes to Life,” which Bynum planned to use as the

opening chapter of his book.

In June 2010, Bynum emailed Marquardt seeking photographs to

include in his book, sending along a draft of the book in PDF form. In the

email, Bynum specified that the PDF was “a draft version of the 12th Man

Book” and “a work in progress . . . not in final form yet.” The draft contained

Bynum’s name, copyright date, an indication that Epic Sports owned the

copyright to the book, and a statement that “no part of the book may be

reproduced or used in any form or by any means . . . without the permission

of the publisher.” The Gill Biography was the opening chapter of the book.

Bynum continued to email Marquardt as late as December 2013, asking

questions related to the book. Bynum planned to publish his 12th Man book

in the fall of 2014.

In January 2014, TAMU’s Athletic Department directed its staff to

find background information on Gill that could be used to promote the 12th

Man story and raise money. Marquardt directed his secretary to retype the

Gill Biography that Bynum sent to Marquardt in 2010; remove any references

to Bynum or Epic Sports; rewrite the byline to read “by Whit Canning,

special to Texas A&M Athletics” to suggest that Canning was commissioned

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to write the Biography exclusively for the Athletic Department; and change

the original title of the Biography from “An A&M Legend Comes to Life” to

“The Original 12th Man.” Marquardt provided the retyped Biography to his

work colleagues, including Cannon and Lane Stephenson, the Director of

News & Information Services at TAMU, for approval and publication.

Stephenson was in charge of TAMU’s official Twitter account (@TAMU)

and “TAMU Times,” which was TAMU’s e-newsletter and website.

Soon after, the Athletic Department published the contents of the Gill

Biography as an article on its website. Then, on January 19, 2014, both

TAMU and its Athletic Department tweeted a link to the article on their

respective Twitter accounts. The posts were retweeted and discussed by

news sources. The article was also featured in TAMU Times.

On January 22, 2014, Bynum emailed Marquardt and another

employee of the Athletic Department requesting immediate removal of the

article. Several hours later, Marquardt responded that the article was no

longer on the website, apologized for the “mix-up,” and asked whether it

would “be possible to post the story as an ‘excerpt’ to [his] book.” He also

stated: “I asked my secretary to key [the Biography] in for me which she

did.” Though the article was removed, it was shared by others and reposted

on various online forums. The book remains unpublished.

In 2017, Bynum and Epic Sports filed suit against the TAMU Athletic

Department, the TAMU 12th Man Foundation, 1 and employees of the

Athletic Department. Relevant here, Plaintiffs assert the following claims: (1)

direct copyright infringement under the Copyright Remedy Clarification Act

(CRCA), 17 U.S.C. § 501, against the Athletic Department, Cannon, and

1

Pursuant to a joint motion, the appeal as to the 12th Man Foundation was

dismissed.

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Stephenson; (2) contributory copyright infringement against the same; (3)

vicarious copyright infringement 2 against the Athletic Department; (4)

violation of the Digital Millennium Copyright Act (DMCA), 17 U.S.C. §

1202, against the Athletic Department; (5) violation of the Takings Clause of

the Texas Constitution against the Athletic Department; and (6) violation of

the Takings Clause of the U.S. Constitution against the Athletic Department.

TAMU, on behalf of the Athletic Department, moved to dismiss the

claims for lack of jurisdiction on state sovereign immunity grounds under

Federal Rule of Civil Procedure 12(b)(1). Cannon and Stephenson moved to

dismiss the claims for failure to state a claim under Rule 12(b)(6) and on

qualified immunity grounds. In March 2019, the district court dismissed

those claims, but later stayed the case pending the Supreme Court’s decision

in Allen v. Cooper, 140 S. Ct. 994 (2020). In September 2020, after Allen was

decided and additional briefing was submitted, the district court entered final

judgment for TAMU, Cannon, and Stephenson. Plaintiffs appeal.

II. Standard of Review

“We review de novo a district court’s grant of a Rule 12(b)(1) motion

to dismiss for lack of subject matter jurisdiction because of state sovereign

immunity.” Meyers ex rel. Benzing v. Texas, 410 F.3d 235, 240 (5th Cir. 2005).

A plaintiff bears the burden of proof that jurisdiction exists. Daniel v. Univ.

of Tex. Sw. Med. Ctr., 960 F.3d 253, 256 (5th Cir. 2020). While legal

conclusions are reviewed de novo, the district court’s factual findings are

2

A direct copyright infringement claim stems directly from the CRCA, but a

contributory or vicarious infringement claim does not. Nevertheless, though “[the CRCA]

does not expressly render anyone liable for infringement committed by another, these

doctrines of secondary liability emerged from common law principles and are well

established in the law.” Metro-Goldwyn-Mayer Studios Inc. v. Grokster, Ltd., 545 U.S. 913,

930 (2005) (internal quotation marks and citations omitted).

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reviewed for clear error. Kuwait Pearls Catering Co. v. Kellogg Brown & Root

Servs., Inc., 853 F.3d 173, 178 (5th Cir. 2017).

We review de novo a district court’s grant of a Rule 12(b)(6) motion

to dismiss for failure to state a claim. Thurman v. Med. Transp. Mgmt., Inc.,

982 F.3d 953, 955 (5th Cir. 2020). We accept all well-pled factual allegations

as true, viewing them in the light most favorable to the plaintiff. Id.

III. State Sovereign Immunity

State sovereign immunity divests federal courts of jurisdiction over

states and their agencies and instrumentalities, unless the state consents to

suit or Congress has clearly and validly abrogated the state’s sovereign

immunity. See U.S. Const. amend. XI; Perez v. Region 20 Educ. Serv. Ctr.,

307 F.3d 318, 326 (5th Cir. 2002). “The state need not be the named party in

a federal lawsuit, for a state’s Eleventh Amendment immunity extends to any

state agency or entity deemed an ‘alter ego’ or ‘arm’ of the state.” Id. 3

TAMU is inarguably an arm of the state entitled to sovereign immunity. See

U.S. Oil Recovery Site Potentially Responsible Parties Grp. v. R.R. Comm’n of

Tex., 898 F.3d 497, 501 (5th Cir. 2018).

As noted above, a state’s immunity from suit is not absolute. With

respect to abrogation, a federal court may entertain a lawsuit against a

nonconsenting state on two conditions: “First, Congress must have enacted

‘unequivocal statutory language’ abrogating the States’ immunity from the

suit. . . . And second, some constitutional provision must allow Congress to

3

“‘Eleventh Amendment immunity’ is a misnomer, however, because that

immunity is really an aspect of the Supreme Court’s concept of state sovereign immunity

and is neither derived from nor limited by the Eleventh Amendment. Nevertheless, the

term ‘Eleventh Amendment immunity’ has been used loosely and interchangeably with

‘state sovereign immunity’ to refer to a state’s immunity from suit without its consent in

federal courts.” Meyers, 410 F.3d at 240–41 (citations omitted).

6

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have thus encroached on the States’ sovereignty. Not even the most

crystalline abrogation can take effect unless it is ‘a valid exercise of

constitutional authority.’” Allen, 140 S. Ct. at 1000–01 (citations omitted).

IV. Claims Against TAMU

Appellants argue that the district court improperly dismissed their

claims against TAMU on several grounds. They assert that the Athletic

Department is a separate entity from TAMU and is therefore not an arm of

the state entitled to sovereign immunity. But even if it were, the district court

should not have dismissed the copyright infringement and takings claims

against TAMU. We address each issue in turn.

A. Arm of the State

The district court held that, as a matter of law, the Athletic

Department lacks jural authority and therefore has no capacity to be sued

under Federal Rule of Civil Procedure 17. Since the “correct party”

substitute should be TAMU, the district court held that TAMU, as an arm

of the state, was entitled to sovereign immunity.

The parties do not dispute that the Athletic Department lacks jural

authority to be sued. However, they disagree as to whether the district court

failed to do a full analysis of the Athletic Department’s arm-of-the-state

status under the framework set forth in Clark v. Tarrant County, 798 F.2d 736

(5th Cir. 1986). In other words, Appellants assert that the Clark framework

should have been applied, which would have led to the conclusion that the

Athletic Department itself can be sued, whereas Appellees contend that a

Clark analysis was not required because TAMU is the proper party.

We agree with Appellants that under circuit precedent, a court must

analyze whether an entity qualifies as an arm of the state as a matter of law

under the Clark framework. See Williams v. Dallas Area Rapid Transit, 242

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F.3d 315, 318–19 (5th Cir. 2001) (“When confronted with a governmental

entity asserting Eleventh Amendment immunity as an arm of the state, we

apply the test established in Clark . . . .”) (holding that the district court

“erred in failing to properly analyze, under Clark, [the entity’s] amenability

to suit”). A proper inquiry under Clark considers six factors: (1) whether the

state statutes and caselaw view the agency as an arm of the state; (2) the

source of funds for the entity; (3) the degree of local autonomy the entity

enjoys; (4) whether the entity is concerned primarily with local, as opposed

to statewide, problems; (5) whether the entity has the authority to sue and be

sued in its own name; and (6) whether the entity has the right to hold and use

property. Clark, 798 F.2d at 744–45. No one factor is dispositive, though it is

well established that the second is the “most important,” while the fifth and

sixth are “less so.” Williams, 242 F.3d at 319 (citing Hudson v. City of New

Orleans, 174 F.3d 677, 681–82 (5th Cir. 1999)). “The goal of this test is to

determine ‘whether the suit is in reality a suit against the state itself.’”

Providence Behavioral Health v. Grant Rd. Pub. Util. Dist., 902 F.3d 448, 456

(5th Cir. 2018) (quoting Hudson, 174 F.3d at 682).

The first factor—state law and caselaw—favors treating the Athletic

Department as an arm of the state. Neither party points to a statute, case, or

a Texas Attorney General opinion relevant to any athletic department of a

state university. Texas law, however, suggests that an athletic department of

a public university is essentially an “auxiliary enterprise” that is an extension

of the state. An “auxiliary enterprise” is defined as “a business activity that

is conducted at a state agency, provides a service to the agency, and is not

paid for with appropriate money.” Tex. Gov’t Code § 2252.061.

Auxiliary enterprises, like athletic departments, do not operate for purely

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educational purposes. See Tex. Const. art. VII, §§ 17(f) 4 & 18(d). 5 But

these enterprises are nevertheless treated as an extension of a public

university. See, e.g., Gulf Reg’l Educ. Television Affiliates v. Univ. of Hous., 746

S.W.2d 803, 808 (Tex. Ct. App. 1988) (concluding that group of school

districts and parochial schools that produced and broadcast television

programming was auxiliary enterprise of University of Houston and had no

authority to file suit without university or State Attorney General’s

permission). Further, courts have treated athletic departments as auxiliary

enterprises. See id. (noting that the “University defines an auxiliary

enterprise as a self-supporting component such as . . . the athletic

department”); Kneeland v. Nat’l Collegiate Athletic Ass’n, 850 F.2d 224, 226–

27 (5th Cir. 1988) (observing unchallenged district court ruling that “athletic

departments of Texas state universities were auxiliary enterprises”); see also

Tanyon T. Lynch, Quid Pro Quo: Restoring Education Primary to College

Basketball, 12 Marq. Sports L. Rev. 595, 607 n.89 (2002) (“Most Division I-

A athletics departments are considered ‘auxiliary enterprises’ and, as such,

are expected to generate revenues sufficient to cover costs.”). Since an

athletic department of a state-supported university is like an auxiliary

enterprise, the Athletic Department is similarly an extension of TAMU and

thus an arm of the state.

4

“The funds appropriated by this section [for educational and general activities]

may not be used for the purpose of constructing, equipping, repairing, or rehabilitating

buildings or other permanent improvements that are to be used only for student housing,

intercollegiate athletics, or auxiliary enterprises.”

5

“The proceeds of the bonds or notes issued under Subsection (a) or (b) of this

section may not be used for the purpose of constructing, equipping, repairing, or

rehabilitating buildings or other permanent improvements that are to be used for student

housing, intercollegiate athletics, or auxiliary enterprises.”

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The second factor—source of funds—favors treating the Athletic

Department as an arm of the state. Though we consider the source of general

operating funds for the entity, because a principal goal of the Eleventh

Amendment is to protect state treasuries, the most significant factor in

assessing an entity’s status is whether a judgment against it will be paid with

state funds. Williams, 242 F.3d at 320 (citing Richardson v. S. Univ., 118 F.3d

450, 452 (5th Cir. 1997)). Texas law prohibits any public funds to be used for

intercollegiate athletic programs, as it requires these programs to be fully self-

supporting. See Tex. Const. art. VII, §§ 17(f) & 18(d); Tex. General

Appropriations Act, 86th Leg., R.S., art. III, § 9 (“[N]o educational and

general funds appropriated may be used for the operation of intercollegiate

athletics.”). Thus, the Athletic Department relies wholly on outside funding.

For instance, in the fiscal year of 2016, it generated approximately $194

million in revenue from, inter alia, ticket sales, contributions, sale of media

rights, and advertisements. It receives $0 in student fees, direct state or other

government support, direct institutional support from TAMU, and indirect

facilities and administrative support.

But while the source of the Athletic Department’s operating funds is

private, it is unclear whether a judgment against the Athletic Department

would be satisfied with private or state-allocated funds. Appellants have the

burden to demonstrate that the Athletic Department will be responsible for

its judgment and debts, not the State. Because they fail to satisfy their burden

in this respect, this factor supports a finding that the Athletic Department is

an arm of the state. See Daniel, 960 F.3d at 258 (concluding second factor

favors finding immunity because plaintiff failed to satisfy burden of showing

that entity would be responsible for judgment and debt, not the state).

The third factor—degree of autonomy—favors treating the Athletic

Department as an arm of the state. The record shows that the Athletic

Department is a department within, and governed by, TAMU. Scott

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Woodward, the Director of Athletics at TAMU, averred: “I report directly

to the President of Texas A&M University, Michael K. Young. President

Young and I stay in frequent contact regarding how the Athletic Department

is performing.” The organizational chart provided by TAMU indicates that

Woodward is part of the TAMU President’s cabinet and reports directly to

the President. Cf. Gulf, 746 S.W.2d at 806–07 (concluding that auxiliary

enterprise was part of state university where enterprise was managed by

university employees who reported through chain of command that went up

to the university’s president). Moreover, policy statements issued by the

TAMU System Board of Regents demonstrate that TAMU exercises

oversight over the Athletics Department. For example, the Board requires

TAMU to “create and maintain an Athletic Council, made up of faculty,

staff, students, alumni, and community members, to advise the president in

the development and administration of the intercollegiate athletics

program,” and that “all intercollegiate athletics programs be maintained in

an academically and fiscally accountable manner with full compliance with

conference and national rules.” TAMU also requires athletic agreements

over $100,000 to be authorized by a university official—generally the

University Contracts Officer, the Chief Financial Officer, or the President.

Further, all athletic coaching employment agreements must be authorized by

the President, and, if over $500,000, with additional approval by the Board

of Regents. Considering TAMU’s oversight and financial regulation, the

Athletic Department does not operate with a level of local autonomy to

consider it independent from the State.

The fourth factor—scope of problem—favors treating the Athletic

Department as an arm of the state. Education is a statewide concern, see

Sissom v. Univ. of Tex. High Sch., 927 F.3d 343, 349 (5th Cir. 2019), and

though athletic programs do not operate for educational purposes, anyone

who plays a sport managed by the Athletics Department is a student at

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TAMU, which belongs to the statewide TAMU System. See United States ex

rel. King v. Univ. of Tex. Health Sci. Ctr.–Hous., 544 F. App’x 490, 495 (5th

Cir. 2013) (finding that University of Texas Health Science Center addressed

statewide concerns of education and research, although its facilities were all

in Houston, as the center belonged to the greater University of Texas System

which had locations throughout the state). Further, the Athletic Department

engages in intercollegiate athletics—i.e., competes with other schools—and

derives financial support from students, alumni, and fans throughout Texas.

Clark’s fourth factor therefore supports finding the Athletic Department as

an arm of the state.

The fifth factor—ability to sue and be sued in its own name—favors

finding the Athletic Department as an arm of the state. Neither party points

to a case in which the department was a named party in a lawsuit.

The sixth factor—right to hold and use property—favors treating the

Athletic Department as an arm of the state. The Board of Regents retains

ultimate control of money collected at TAMU, including “receipts from

school activities.” Tex. Educ. Code § 51.002; see Kneeland, 850 F.2d at

226–27 (observing unchallenged district court ruling that funds generated by

athletic departments of state universities were “public funds belonging to the

State of Texas”). The Athletic Department does not own or purchase real

property, and any real property used by the Athletic Department is managed

by the Board of Regents. Tex. Educ. Code § 85.25 (“The board is vested

with the sole and exclusive management and control of lands and mineral

interests under its jurisdiction and that may be acquired by it.”).

All six Clark factors weigh in favor of finding that the Athletic

Department is entitled to arm-of-the-state status. Accordingly, we conclude

that the Athletic Department is a part of TAMU and therefore enjoys state

sovereign immunity.

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B. Copyright Infringement Claims

Having concluded that the Athletic Department is an arm of the state,

we must next address whether its sovereign immunity is abrogated from the

copyright infringement claims. Because the Athletic Department is an

extension of TAMU, we will now refer to the entity as TAMU.

i. Abrogation

In Allen v. Cooper, 140 S. Ct. 994 (2020), the Supreme Court recently

addressed whether the Copyright Remedy Clarification Act (CRCA) validly

abrogated the states’ immunity from copyright infringement suits. 6 The

CRCA provides that a state “shall not be immune, under the Eleventh

Amendment [or] any other doctrine of sovereign immunity, from suit in

Federal court” for copyright infringement. 17 U.S.C. § 511(a). Though

Congress used clear language to abrogate immunity, the Court held that

Congress had no authority to do so under Article I, which empowers

Congress to protect copyrights, or Section 5 of the Fourteenth Amendment,

which authorizes Congress to enact “reasonably prophylactic legislation”

aimed at preventing states from violating the Fourteenth Amendment. Allen,

140 S. Ct. at 1004 (citations omitted). With respect to Section 5, the CRCA

failed the “congruence and proportionality” test because the evidence of

actual constitutional injury—that is, willful copyright infringement by

states—was “exceedingly slight.” Id. at 1007. Congress therefore lacked

authority to broadly abrogate the states’ immunity from copyright

infringement suits.

6

The Fifth Circuit addressed this question many years ago and concluded that the

CRCA was not a valid abrogation of state sovereign immunity from copyright infringement

suits. See Chavez v. Arte Publico Press, 204 F.3d 601, 605 (5th Cir. 2000).

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Appellants argue, however, that Allen did not foreclose abrogation of

sovereign immunity from copyright infringement suits where a state’s

violation of the CRCA independently constitutes an actual violation of the

Fourteenth Amendment. Specifically, they allege that TAMU committed

two independent violations of the Fourteenth Amendment: (1) deprivation

of property without due process, and (2) takings. Appellants cite to United

States v. Georgia, 546 U.S. 151 (2006), which held that “insofar as Title II [of

the Americans with Disabilities Act] creates a private cause of action for

damages against the States for conduct that actually violates the Fourteenth

Amendment, Title II validly abrogates state sovereign immunity.” Id. at 159

(emphasis in original) (reviewing whether state violated prisoner’s Eighth

Amendment right to be free from cruel and unusual punishment, which is

incorporated in the Due Process Clause of the Fourteenth Amendment).

Thus, Georgia arguably set forth two categories of abrogation: (1)

where a statute validly abrogates sovereign immunity for all claims, and (2)

where a statute is not a valid prophylactic abrogation of all claims, but does

abrogate sovereign immunity for those claims based on conduct constituting

an actual violation of the Fourteenth Amendment, for the statutory remedy

would be congruent and proportional as applied to that case. See id. (directing

lower courts to determine “on a claim-by-claim basis, (1) which aspects of

the State’s alleged conduct violated Title II; (2) to what extent such

misconduct also violated the Fourteenth Amendment; and (3) insofar as such

misconduct violated Title II but did not violate the Fourteenth Amendment,

whether Congress’s purported abrogation of sovereign immunity as to that

class of conduct is nevertheless valid”). Appellants contend that this case

falls in the second category.

In support of their position, Appellants cite to National Association of

Boards of Pharmacy v. Board of Regents of the University System of Georgia

(“NABP”), 633 F.3d 1297 (11th Cir. 2011), where the Eleventh Circuit

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applied Georgia in a copyright infringement suit, observing that “[i]t is well

established that § 5 grants Congress the authority to abrogate state sovereign

immunity for violations of the Fourteenth Amendment.” Id. at 1315 (citing

Georgia, 546 U.S. at 158). There, however, the court ultimately rejected the

plaintiff’s claim that the copyright infringement amounted to a violation of

procedural due process, concluding that a pre-deprivation process was not

feasible under the facts alleged and that adequate post-deprivation remedies

were provided by the State. Id. at 1318–19. Appellants also point to oral

argument in Allen, where the State of North Carolina conceded that even if

the Supreme Court held that the CRCA was not a valid prophylactic

abrogation of state immunity, Georgia would still provide a remedy for

copyright infringement constituting an actual violation of the Fourteenth

Amendment. See Transcript of Oral Argument at 39–40, Allen v. Cooper, 140

S. Ct. 994 (2020) (No. 18-877) (“[W]henever a plaintiff can reasonably allege

that there has been intentional copyright infringement and there are not

adequate remedies, then, under this Court’s Georgia decision, they can bring

a direct constitutional claim. We don’t dispute that.”). Further, after Allen

was decided, the district court on remand recently held that the plaintiffs’

copyright infringement claim could still proceed because “[a]lthough the

Supreme Court ruled that the CRCA was unconstitutional insofar as it

attempted to abrogate sovereign immunity prophylactically . . . the statute

remains whenever plaintiff alleges both a constitutional violation as well as a

statutory violation. Therefore, plaintiffs can still use the CRCA as a basis for

its Georgia claim [alleging that defendants’ conduct amounted to an

unconstitutional taking].” Allen v. Cooper, -- F. Supp. 3d --, 2021 WL

3682415, at *11 (E.D.N.C. Aug. 18, 2021).

ii. Actual Violations of the Fourteenth Amendment

We need not decide whether Georgia extends to copyright

infringement cases, because even assuming it does, Appellants fail to allege

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that TAMU’s conduct constitutes an actual violation of the Fourteenth

Amendment.

First, the copyright infringement claim against TAMU for deprivation

of property without due process cannot survive dismissal. To come within

the reach of the procedural requirements of the Due Process Clause, a

violation must (1) be “intentional, or at least reckless,” and (2) lack adequate

post-deprivation state remedies. Allen, 140 S. Ct. at 1004. For due process

purposes, copyrights are a form of property. Id. Appellants sufficiently allege

that the infringement was intentional—Marquardt directed his secretary to

retype the Gill Biography, remove any copyright information, and change its

title and byline to indicate that TAMU owned the work, and then shared it

with his colleagues for approval and publication.

However, meaningful post-deprivation state remedies are available to

redress the injury. Though no tort remedies are available under Texas law, 7

Appellants have a viable takings claim against TAMU for copyright

infringement under the Texas Constitution. More expansive than the federal

Takings Clause, the Texas Takings Clause provides: “No person’s property

shall be taken, damaged, or destroyed for or applied to public use without

adequate compensation being made.” Tex. Const. art. I, § 17. The Clause

itself waives sovereign immunity for a valid takings claim brought in state

court. Texas v. Holland, 221 S.W.3d 639, 643 (Tex. 2007). Though the Texas

Supreme Court recently held that a public university’s single act of copyright

7

Texas has not waived its immunity from tort claims arising out of copyright

infringement allegations. See Tex. Civ. Prac. & Rem. Code § 101.021(1) (providing

for limited waiver of governmental immunity for claims of property damage, personal

injury, or death proximately caused by wrongful or negligent conduct of governmental

employee arising out of (1) use of publicly owned motor-driven equipment or motor

vehicle, (2) premises defects, and (3) conditions or uses of certain property).

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infringement—i.e., displaying a photograph on its website without the

owner’s authorization—did not constitute a per se taking, it nevertheless left

the door open for a copyright owner to bring a regulatory takings claim against

the State for infringement. Jim Olive Photography v. Univ. of Hous., -- S.W.3d

--, 2021 WL 2483766, at *9 (Tex. June 18, 2021); see also id. (Busby, J.,

concurring) (“Nothing in the Court’s opinion should be understood to

indicate a view on [whether a state’s copyright infringement could in some

circumstances require compensation] because Olive has alleged no claim

under the ‘damaged’ or ‘applied’ prongs of the Texas Takings Clause.”).

Accordingly, because Appellants are not foreclosed from pursuing a takings

claim in state court, TAMU did not violate their procedural due process

rights. See McClure v. Biesenbach, 355 F. App’x 800, 805 (5th Cir. 2009)

(“Post-deprivation process is adequate if it allows the prospect of

compensation for the loss.”) (citing Parratt v. Taylor, 451 U.S. 527, 543–44

(1981), overruled in part by Daniels v. Williams, 474 U.S. 327, 330–31 (1986)).

Moreover, the copyright infringement claim against TAMU for its

taking of property fails to survive dismissal as well. The Fifth Amendment

provides that “private property [shall not] be taken for public use, without

just compensation.” U.S. Const. amend. V. The Takings Clause is made

applicable to the states by incorporation through the Due Process Clause of

the Fourteenth Amendment. Murr v. Wisconsin, 137 S. Ct. 1933, 1942 (2017)

(citing Chicago Burlington & Q.R.C. v. Chicago, 166 U.S. 226 (1897)). The

Supreme Court has not addressed whether copyrights are a form of property

protected by the Takings Clause, 8 but this is not a question of first impression

8

The Supreme Court, however, has recognized that other forms of intellectual

property are protected by the Takings Clause. See Horne v. Dep’t of Agric., 576 U.S. 350,

359–60 (2015) (patents); Ruckelshaus v. Monsanto Co., 467 U.S. 986, 1003 (1984) (trade

secrets).

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for this circuit. 9 In Porter v. United States, 473 F.2d 1329, 1337 (5th Cir. 1973),

where the widow of Lee Harvey Oswald sought compensation for the taking

of property by the United States, we held:

We turn finally to the question whether Mrs. Porter can

recover for the diminution in value of Oswald’s writings

attributable to their publication in the Warren Commission

Report. It is, of course, quite plain that the recovery sought

here is for infringement by the government of Mrs. Porter’s

common law copyright interest in Oswald’s writings. Such

infringement is not a “taking” as the term is constitutionally

understood. Rather, it has always been held that infringement

of copyright, whether common law, Twentieth Century Fox Film

Corp. v. Dieckhaus, 153 F.2d 893 (CA 8, 1948), or statutory,

Turton v. United States, 212 F.2d 354 (CA 6, 1954) constitutes

a tort.

We see no reason to deviate from Porter, so we conclude that copyrights are

not a form of property protected by the Takings Clause. Accordingly, the

copyright infringement claim based on a takings allegation fails here.

C. Takings Claims

We next address whether TAMU’s sovereign immunity is abrogated

from the federal and state takings claims, which were pleaded in the

alternative to the copyright infringement claims.

9

We recognize that a handful of sister circuits have suggested that copyrights are

protected by the Takings Clause. See CCC Info. Servs., Inc. v. Maclean Hunter Market

Reports, Inc., 44 F.3d 61, 74 (2d Cir. 1994) (“[A] rule that the adoption of such a reference

by a state legislature or administrative body deprived the copyright owner of its property

would raise very substantial problems under the Takings Clause of the Constitution.”);

Lane v. First Nat’l Bank of Boston, 871 F.2d 166, 174 (1st Cir. 1989) (suggesting if state

remedies do not afford just compensation for copyright infringement, “the Takings Clause

of the federal Constitution might at that point enable [owner] to pursue a damage remedy

in federal court”).

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A state is entitled to sovereign immunity from a federal takings claim.

Bay Point Props., Inc. v. Miss. Transp. Comm’n, 937 F.3d 454, 457 (5th Cir.

2019) (affirming dismissal of takings claim against Mississippi on sovereign

immunity grounds). Appellants argue, however, that immunity is abrogated

when no remedy is available in state court. They cite to Williams v. Utah

Department of Corrections, 928 F.3d 1209, 1213 (10th Cir. 2019), which

suggests that a takings claim is barred only “as long as a remedy is available

in state court.” Because we have concluded that Appellants can pursue a

claim under the Texas Takings Clause, state sovereign immunity bars the

federal takings claim here. See supra IV.B.

A state is also entitled to sovereign immunity from a state takings

claim brought in federal court. In Pennhurst State School and Hospital v.

Halderman, 465 U.S. 89, 119–21 (1984), the Supreme Court held that federal

courts are barred from hearing state law claims against a state, reasoning that

such claims cannot be maintained because supplemental jurisdiction does not

abrogate the state’s sovereign immunity. Further, even though the Texas

Takings Clause waives immunity for state takings claims brought in state

court, “[w]aiver of sovereign immunity in state courts does not waive

Eleventh Amendment immunity from suit in federal court.” Guetersloh v.

Texas, 25 F.3d 1044 (5th Cir. 1994) (unpublished) (citing Pennhurst, 465 U.S.

at 99 n.9). Accordingly, sovereign immunity bars the state takings claim.

V. Claims Against Cannon and Stephenson

Lastly, we address the direct copyright infringement claim against

Cannon, and the contributory copyright infringement claims against Cannon

and Stephenson.

A. Direct Copyright Infringement

Direct copyright infringement requires proof of two elements: “(1)

ownership of a valid copyright, and (2) copying of constituent elements of the

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work that are original.” BWP Media USA, Inc. v. T&S Software Assocs., Inc.,

852 F.3d 436, 439 (5th Cir. 2017) (quoting Feist Publ’ns, Inc. v. Rural Tel.

Serv. Co., 499 U.S. 340, 361 (1991)). The purported infringer must have acted

with “volitional conduct,” id.—that is, “[t]here must be actual infringing

conduct with a nexus sufficiently close and causal to the illegal copying that

one could conclude that the machine owner himself trespassed on the

exclusive domain of the copyright owner.” Id. at 440 (quoting CoStar Grp.,

Inc. v. LoopNet, Inc., 373 F.3d 544, 550 (4th Cir. 2004)) (internal quotation

marks omitted).

The allegations do not support the reasonable inference that Cannon

directly infringed the copyright. Marquardt did the actual recopying—he, not

Cannon, retyped the Gill Biography and scrubbed off all copyright

information to present it as TAMU’s work. Cannon never received the

original work and only received the infringed work from Marquardt. He had

no actual or constructive knowledge of the infringement. Accordingly, we

affirm dismissal of the direct copyright infringement claim against Cannon

for failure to state a claim.

B. Contributory Copyright Infringement

“Contributory infringement is ‘intentionally inducing or encouraging

direct infringement.’” Geophysical Serv., Inc. v. TGS-NOPEC Geophysical

Co., 850 F.3d 785, 798 (5th Cir. 2017) (quoting Metro-Goldwyn-Mayer Studios

Inc. v. Grokster, Ltd., 545 U.S. 913, 930 (2005)). In other words, “[a] party is

liable for contributory infringement when it, ‘with knowledge of the

infringing activity, induces, causes or materially contributes to infringing

conduct of another.’” Alcatel USA, Inc. v. DGI Technologies, Inc., 166 F.3d

772, 790 (5th Cir. 1999) (citation omitted).

The allegations do not support the reasonable inference that Cannon

or Stephenson contributorily infringed the copyright. Again, Cannon had no

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knowledge of the underlying infringement—he never received the original

work and only received the infringing article from Marquardt. There was no

intent or even knowledge on Cannon’s part with respect to the infringement.

Further, Stephenson also lacked the requisite knowledge or intent to commit

infringement. He did not receive the original draft of Bynum’s book, as he

only received the retyped article from Marquardt and reasonably assumed it

was not an infringed piece of writing. Accordingly, we affirm dismissal of the

contributory copyright infringement claims against Cannon and Stephenson

for failure to state a claim.

VI. Conclusion

For the foregoing reasons, we AFFIRM.

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