by Dennis Crouch
Canada Hockey LLC (Michael Bynum) v. Texas A&M University (Supreme Court 2022)
E. King Gill started the TAMU Aggie’s “12th Man” tradition back in 1921 by coming down from the stands back ready to step-in and play after a player injury.
Michael Bynum spent over 1,500 hours preparing a book on Gill. The book included a short biography of Gill written by Whit Canning (under a work-made-for-hire agreement). Bynum was seeking more materials from TAMU and sent a PDF draft version of the book to TAMU athletics publicity folks. The email and PDF included several statements indicating it was copyrighted and not for redistribution.
TAMU publicity liked the 1-page biography and so retyped it; changed the byline to “by Whit Canning, special to Texas A&M Athletics”; and sent it out electronically to 100,000+ folks (all without permission or notification).
Bynum sued for copyright infringement. But, the action was stymied by the Supreme Court’s decision in Allen v. Cooper, 140 S. Ct. 994 (2020). That case held that sovereign immunity protected states from copyright infringement liability despite direct Congressional statements otherwise. In his new petition for certiorari, Bynum presents two end-runs around Allen:
- Actual Violation of the 14th Amendment. Even if Congress did not have the power to entirely eliminate sovereign immunity for copyright infringement, a copyright holder still has an action if the infringement itself constitutes an actual violation of the 14th Amendment under United States v. Georgia, 546 U.S. 151 (2006).
- Taking. Although a state might not be liable under a copyright infringement theory, it may still be liable for a Fourteenth Amendment taking.
In rejecting the actual due-process violation claim, the 5th Circuit concluded that the plaintiff’s copyright claims were
“viable [as a] takings claim against TAMU for copyright infringement under the Texas Constitution.” Canada Hockey, L.L.C. v. Texas A&M U. Athletic Dept., 20-20503, 2022 WL 445172, at *8 (5th Cir. Feb. 14, 2022). Since the state provided an adequate potential remedy, the 5th Circuit found no due process violation by the state of Texas. The court did recognize that the Texas Supreme Court recently rejected a copyright takings claim in Jim Olive Photography v. Univ. of Hous., ––– S.W.3d ––––, 2021 WL 2483766, at *9 (Tex. June 18, 2021). But, the 5th circuit pointed to a concurring opinion that it is possible that – in some circumstances – the state might find copyrights to have been unduly taken.
Federal Takings Claim: Likewise, the 14th Amendment due process clause also makes the 5th amendment takings clause applicable to the states. But, states retain sovereign immunity in this context if they provide an adequate remedy under state law. Here, the 5th Circuit court found again that Texas takings law suffices and so no due process problem.
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- The Eleventh Amendment states that “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 State.”
- The Copyright Remedy Clarification Act of 1990 (“CRCA”) indicates that individual states can be held liable for copyright infringement and “shall not be immune, under the Eleventh Amendment of the Constitution of the United States or under any other doctrine of sovereign immunity, from suit in Federal court by any person . . . for a violation of any of the exclusive rights of a copyright owner.”
- In Allen v. Cooper, the Supreme Court held that congress lacked power to prophylactically abrogate sovereign immunity.
- In United States v. Georgia, 546 U.S. 151 (2006), in the context of applying ADA to state prisons, the court held that Congress had power to apply the law to state prisons in situations where the conduct actually violates the 14th amendment on a claim-by-claim basis. This is a distinct justification from the prophylactic approach discussed in Allen. The Allen court did not directly address the US v. Georgia arguments.