Fifth Circuit Delivers Partial Victory to Texas A&M University in Copyright Infringement Case

Oct 8, 2021

By Tal Dickstein and Alex Inman, of Loeb & Loeb

The Fifth Circuit has affirmed the dismissal of copyright infringement claims against Texas A&M University on sovereign immunity grounds, but held that the university’s unauthorized use of plaintiff’s work may be subject to takings claim in state court.

The Texas A&M University football team is known for the lore of the “12th Man,” which originated in 1922 when reserve football player E. King Gill came down from the stands ready to play after several TAMU players were injured. Sportswriter Michael Bynum wrote a biography about Gill and his impact on TAMU. As part of the writing process, Bynum visited TAMU and interviewed a number of people in the TAMU athletic department, including Associate Director of Media Relations Brad Marquardt and Assistant Athletic Director for Media Relations Alan Cannon.

Bynum, seeking photographs from TAMU to include in his book, emailed a draft of the book to Marquardt in 2010. Included in the draft was language making clear that Bynum was the author and that Canada Hockey LLC d/b/a Epic Sports, Bynum’s publishing company, owned the copyright. Communications between Bynum and Marquardt continued until late 2013, and Bynum hoped to publish his book in fall 2014.

As part of a fundraising effort that same year, the TAMU athletic department tasked its staff with finding background information on Gill. Marquardt directed his secretary to take Bynum’s biography of Gill and remove all references to Bynum and Epic. He then changed the title and circulated the biography among athletic department staff. The Gill biography was subsequently published on a TAMU athletic department website and shared widely on TAMU athletic department social media. When he discovered this, Bynum contacted Marquardt and asked him to remove the article. Marquardt complied, but the biography continues to be shared widely and Bynum’s book remains unpublished.

Bynum and Epic filed suit against TAMU and employees of the athletic department, including Cannon, in 2017, alleging direct copyright infringement under the Copyright Remedy Clarification Act (CRCA), vicarious and contributory copyright infringement under the CRCA, violations of the Digital Millennium Copyright Act (DMCA) by the TAMU athletic department, and violations of the takings clauses of the Texas and U.S. Constitutions by the athletic department. TAMU moved to dismiss on behalf of the athletic department on state sovereign immunity grounds. The district court dismissed the claims but stayed its decision pending the U.S. Supreme Court’s decision in Allen v. Cooper. (Read our summary of the Supreme Court’s decision here.) Upon the Supreme Court’s 2020 decision, which held that the CRCA was unconstitutional and states retained sovereign immunity from copyright infringement claims, the district court entered final judgment for TAMU.

On appeal, the Fifth Circuit first addressed whether the athletic department was a separate entity from TAMU (and therefore not entitled to sovereign immunity) or was an arm of the state. The court determined that each factor used to determine whether an organization is an arm of the state—whether the state statutes and case law view the agency as an arm of the state; the source of funds for the entity; the degree of local autonomy the entity enjoys; whether the entity is concerned primarily with local, as opposed to statewide, problems; whether the entity has the authority to sue and be sued in its own name; and whether the entity has the right to hold and use property—favored treating the athletic department as an arm of the state through TAMU and that it was therefore entitled to sovereign immunity.

The court then considered whether the state’s sovereign immunity from copyright infringement claims had been abrogated. In Allen, the Supreme Court held that the CRCA did not validly abrogate the states’ sovereign immunity from copyright infringement suits, holding that, while the CRCA was clear in its intent to abrogate sovereign immunity, Congress had no power to do so under either Article I of the U.S. Constitution (which authorizes Congress to protect copyrights) or Section 5 of the Fourteenth Amendment, because the evidence of actual constitutional injury from willful copyright infringement by the states was “exceedingly slight.”

Bynum and Epic argued that this case was distinct from Allen because TAMU’s copyright infringement under the CRCA violated the Fourteenth Amendment by depriving Bynum and Epic of property without due process and taking the property. Bynum and Epic argued that, just as the Supreme Court found an abrogation of sovereign immunity under the Americans with Disabilities Act for actual violations of the Fourteenth Amendment in its 2006 decision in United States v. Georgia, the court should so find with respect to the CRCA in this case.

The Fifth Circuit determined that it need not consider whether Georgia applied to copyright claims, because Bynum and Epic failed to sufficiently plead that TAMU’s actions actually violated the Fourteenth Amendment. First, regarding the deprivation of property claim, while TAMU deprived Bynum and Epic of their property rights by intentionally infringing their copyright, Bynum and Epic still had meaningful post-deprivation remedies in state court—specifically, by bringing a takings claim under the Texas Constitution, which is more expansive than a takings claim under federal law and which automatically waives sovereign immunity in state court.

Second, regarding the takings claim under the U.S. Constitution, the court noted that, while the question of whether copyright infringement constitutes a valid takings claim has not been considered by the U.S. Supreme Court, the Fifth Circuit held in Porter v. United States, that copyrights are not a form of property that is protected by the Takings Clause of the U.S. Constitution.

Addressing the other claims, the court found that the takings claims, pleaded in the alternative, necessarily failed because a state is entitled to sovereign immunity from a federal takings claim if there is a valid remedy available in state court—and as the court previously noted, there was a takings claim available under the Texas Constitution—and similarly, states are entitled to sovereign immunity from state takings claims filed in federal court.

The claims against the individuals, including Cannon, were similarly dismissed, as they had a supervisory role of Marquardt, but there were no allegations that they either directly infringed Bynum’s work or were aware of the infringement before it occurred.

The opinion can be viewed here: 20-20503.0.pdf (uscourts.gov)

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