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Case 4:04-cv-00488-BRW Document 30 Filed 12/21/07 Page 1 of 13
`
`IN THE UNITED STATES DISTRICT COURT
`EASTERN DISTRICT OF ARKANSAS
`WESTERN DIVISION
`
`INFOMATH, INC.
`
`V.
`
`4:04CV00488-WRW
`
`PLAINTIFF
`
`UNIVERSITY OF ARKANSAS D/B/A
`UNIVERSITY OF ARKANSAS AT LITTLE
`ROCK -- DONAGHEY COLLEGE
`OF INFORMATION SCIENCE AND
`SYSTEMS ENGINEERING, and MARY L.
`GOOD and CHERYL CALDWELL, acting
`in their official capacities as employees
`of the University of Arkansas
`
`DEFENDANTS
`
`ORDER
`
` Pending are Defendants’ Motion (Doc. 4) and Amended Motion to Dismiss (Doc. 15), to
`
`which Plaintiff responded (Docs. 8, 19).
`
`Plaintiff requests damages, declaratory relief, and injunctive relief for copyright
`
`infringement. Defendants argue that the claims should be dismissed for lack of subject matter
`
`jurisdiction, since they are immune from suit under the Eleventh Amendment of the United
`
`States Constitution.
`
`I. Background
`
`In March of 2000, Plaintiff InfoMath and Defendant University of Arkansas at Little
`
`Rock (“University”) entered into a written contract to provide an internet based pre-calculus
`
`course for Arkansas schools.1 Defendant Mary L. Good (“Good”) is Dean of the Donaghey
`
`1Doc. No. 1, p. 2.
`
`1
`
`

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`Case 4:04-cv-00488-BRW Document 30 Filed 12/21/07 Page 2 of 13
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`College of Information Science and Systems Engineering. Defendant Cheryl Caldwell
`
`(“Caldwell”) was an employee of the University and served as the project coordinator for the
`
`pre-calculus course.
`
` Under the contract, InfoMath would design and develop the course and the University
`
`would provide the course material. The University would retain copyright interests in all the
`
`material it created. Caldwell would guide a project team composed of herself, University math
`
`professors, and school teachers to develop the material. Caldwell and the University, however,
`
`never provided any course material to InfoMath.2
`
`When the University did not provide the course material, InfoMath contracted with third-
`
`party teachers to create its own course content.3 InfoMath, however, allowed the University to
`
`use this material as long as it maintained a contractual relationship with InfoMath.
`
`InfoMath completed all the requirements of the initial contract and received excellent
`
`performance reviews. At the request of the University, InfoMath also provided services outside
`
`the scope of the original contract, like creating a database and website. InfoMath provided the
`
`additional materials and services because they were assured by Caldwell that this was the
`
`beginning of a long term relationship.4
`
`In the spring of 2001, the University informed InfoMath that it would have to bid for the
`
`right to host the website and database that it had already created. InfoMath lost the bid, but now
`
`argues that it has exclusive copyright interests of all the course content it created. InfoMath
`
`2Doc. No. 1, p. 2.
`
`3InfoMath later received a copyright registration for this material four years later on April
`16, 2004, approximately four years after the initial contract with the University.
`
`4Doc. No. 1, p. 3.
`
`2
`
`

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`Case 4:04-cv-00488-BRW Document 30 Filed 12/21/07 Page 3 of 13
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`contends that, since the University did not provide any course content to InfoMath, it has no
`
`interests in the InfoMath created course. The University has continued to use InfoMath’s course
`
`since dissolving their contractual relationship in May of 2001.
`
`InfoMath filed a claim to the Arkansas Claims Commission in order to determine the
`
`rights of the parties under the contract. The Claims Commission unanimously found the
`
`University liable and awarded $15,000 to InfoMath. The Claims Commission did not make a
`
`ruling about copyright ownership or injunctive relief requested by InfoMath. Thus, InfoMath
`
`contends that the ruling from the Claims Commission is inadequate and filed this suit.
`
`II. Standard
`
`A motion to dismiss should not be granted unless it appears beyond doubt that a plaintiff
`
`can prove no set of facts which would entitle him to relief.5 The complaint’s allegations must be
`
`accepted as true; and, the complaint, and all reasonable inferences arising from it, must be
`
`construed in a plaintiff’s favor.6 A complaint should not be dismissed merely because the
`
`complaint does not state with precision all elements that give rise to a legal basis for recovery.7
`
`III. Discussion
`
`A. Eleventh Amendment Sovereign Immunity
`
`Defendants argue that they cannot be held liable under the Eleventh Amendment.
`
`However Eleventh Amendment protection is not absolute; there are two exceptions. The first
`
`5Thomas W. Garland, Inc. V. City of St. Louis, 596 F.2d 784, 787 (8th Cir. 1979).
`
`6United States v. Mississippi, 380 U.S. 128, 143 (1965); see also Bennett v. Berg, 685
`F.2d 1053, 1059 (8th Cir. 1983); Bramlet v. Wilson, 495 F.2d 714, 717 (8th Cir. 1974).
`
`7Bramlet, 495 F.2d at 716; Smith v. Quachita Technical College, 337 F.3d 1079, 1080
`(8th Cir. 2003).
`
`3
`
`

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`Case 4:04-cv-00488-BRW Document 30 Filed 12/21/07 Page 4 of 13
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`exception applies when Congress has abrogated the immunity by statute.8 The second exception
`
`applies when a state waives its immunity to suit in federal court.9 Plaintiff argues that both
`
`exceptions apply.
`
`The Eleventh Amendment provides 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.”10 In
`
`determining the applicability of the Eleventh Amendment to the political subdivisions of the
`
`state, this Court must,
`
`[e]xamine the particular entity in question and its power and characteristics as
`created by state law to determine whether the suit is in reality a suit against the state.
`Courts typically look at the degree of local autonomy and control and most
`importantly whether the funds to pay any award will be derived from the state
`treasury.11
`
`“Each state university . . . must be considered on the basis of its own particular circumstances”12
`
`in determining if the university is a state instrumentality that enjoys the protection of the
`
`Eleventh Amendment. As of 1985, the Eighth Circuit determined that the majority of cases
`
`addressing the question of Eleventh Amendment immunity for public colleges and universities
`
`held that these institutions are arms of their respective state governments and are immune from
`
`8Fitzpatrick v. Bitzer, 427 U.S. 445 (1976).
`
`9Barnes v. Missouri, 960 F.2d 63, 65 (8th Cir. 1992).
`
`10U.S. Const. amend XI.
`
`11Okruhlik v. University of Arkansas ex rel. May, 255 F.3d 615, 622 (8th Cir. 2001);
`Greenwood v. Ross, 778 F.2d 448, 453 (8th Cir. 1985).
`
`12Greenwood, 778 F.2d at 453.
`
`4
`
`

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`Case 4:04-cv-00488-BRW Document 30 Filed 12/21/07 Page 5 of 13
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`suit.13 The Greenwood court did not make the final determination whether the University of
`
`Arkansas was immune from suit and remanded the case for that determination. The District
`
`Court held that the University of Arkansas is immune from suits for damages under the Eleventh
`
`Amendment.14
`
`The Eleventh Amendment bars federal suits against public servants in their official
`
`capacities when the “state is the real, substantial party of interest.”15 The Eleventh Amendment,
`
`however, does not bar suits against a public servant in his official capacity when he is alleged to
`
`have committed an unconstitutional act or illegal act because the state has no authority to order
`
`such acts, and the official is therefore “stripped of his official or representative character.”16
`
`13Id. (quoting Hall v. Medical College, 742 F.2d 299, 301 (6th Cir. 1984) (Ohio); see
`United Carolina Bank v. Board of Regents, 665 F.2d 553, 561 (5th Cir. 1982) (Stephen F. Austin
`State University in Texas); Rutledge v. Arizona Board of Regents, 660 F.2d 1345, 1349-50 (9th
`Cir. 1981) (Arizona State University),Jagnandan v. Giles, 538 F.2d 1166, 1176 (5th Cir. 1976)
`(Mississippi State University), cert. denied, 432 U.S. 910 (1977); Prebble v. Brodrick, 535 F.2d
`605, 610 (10th Cir. 1976) (University of Wyoming); Long v. Richardson, 525 F.2d 74, 79 (6th
`Cir. 1975) (Memphis State University); Brennan v. University of Kansas, 451 F.2d 1287, 1290
`(10th Cir. 1971); Walstad v. University of Minnesota Hospitals, 442 F.2d 634, 641-42 (8th Cir.
`1971). Contra Goss v. San Jacinto Junior College, 588 F.2d 96, 98 (5th Cir.1978 ), modified,
`595 F.2d 1119 (1979); Dyson v. Lavery, 417 F.Supp. 103, 108 (E.D. Va. 1976) (Virginia
`Polytechnic Institute and State University); Gordenstein v. University of Delaware, 381 F.Supp.
`718, 725 (D. Del. 1974).
`
`14Greenwood v. Ross, No. LR-C-79-406, 1988 WL 156151 (E.D. Ark. January 29, 1988).
`
`15Edelman v. Jordan, 415 U.S. 651, 666-67 (1974) (holding that a suit against a state
`official for violation of federal law may only seek injunctive relief governing the official’s future
`conduct); Assad-Faltas v. University of Arkansas for Medical Sciences, 708 F. Supp. 1026,
`1029-1030 (E.D. Ark. 1989); Slaughter v. Levine, 801 F.2d 288 (8th Cir. 1986).
`
`16Id. at 102.
`
`5
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`

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`Case 4:04-cv-00488-BRW Document 30 Filed 12/21/07 Page 6 of 13
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`Even in such cases, only injunctive relief is permitted because retroactive relief would have a
`
`direct impact on the state treasury.17
`
`In the present case, Plaintiff requests injunctive relief and money damages. However, the
`
`Eleventh Amendment bars Plaintiff’s claims for money damages against the University and
`
`Defendants sued in their official capacity. Accordingly, Defendants’ Motion to Dismiss the
`
`University of Arkansas at Little Rock is GRANTED, and the request for money damages from
`
`Good and Caldwell, acting in their official capacity, is GRANTED.
`
`B. Copyright Remedy Clarification Act
`
`Although the Eleventh Amendment prevents citizens from bringing suit against a state in
`
`federal court, Congress may abrogate a state’s Eleventh Amendment immunity. In order to
`
`successfully abrogate Eleventh Amendment immunity, Congress must: (1) clearly express its
`
`intent to waive immunity, and (2) act under a valid exercise of power found in Section 5 of the
`
`Fourteenth Amendment.18 This power is limited however. The Supreme Court held that “there
`
`must be congruence and proportionality between the injury to be prevented or remedied and the
`
`means adopted to that end.”19
`
`In 1990, Congress enacted the Copyright Remedy Clarification Act (“CRCA”). In
`
`addition to the CRCA, Congress passed the Patent and Plant Variety Protection Remedy
`
`Clarification Act (“Patent Remedy Act”) and the Trademark Remedy Clarification Act
`
`17Edelman v. Jordan, 415 U.S. 651, 666-67 (1974) (holding that a suit against a state
`official for violation of federal law may only seek injunctive relief governing the official’s future
`conduct); Assad-Faltas v. University of Arkansas for Medical Sciences, 708 F. Supp. 1026,
`1029-1030 (E.D. Ark. 1989); Slaughter v. Levine, 801 F.2d 288 (8th Cir. 1986).
`
`18Seminole Tribe of Florida v. Florida, 517 U.S. 44, 55-71 (1996).
`
`19City of Boerne v. Flores, 521 U.S. 507, 520 (1997).
`
`6
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`

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`Case 4:04-cv-00488-BRW Document 30 Filed 12/21/07 Page 7 of 13
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`(“TRCA”).20 Passage of these statutes were part of an effort by Congress to remedy imbalances
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`between private and state institutions caused by the Eleventh Amendment sovereign immunity in
`
`trademark, copyright and patent law.21 All three statutes waive the state’s Eleventh Amendment
`
`immunity from liability for violations of federal trademark, copyright, and patent law.
`
`The CRCA states,
`
`Any State, any instrumentality of a State, and any officer or employee of the State
`or instrumentality of a State acting in his or her official capacity, 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, including any governmental or nongovernmental entity, for violation of any
`of the exclusive rights of a copyright owner.22
`
`Plaintiff asserts that the actions of the Defendants violated its copyright interests. Defendants
`
`argue, however, that the CRCA is unconstitutional.
`
`It is clear from the language of the CRCA that Congress intended to abrogate Eleventh
`
`Amendment immunity. The question now turns on whether Congress acted under a valid
`
`exercise of power found in Section 5 of the Fourteenth Amendment. It did not.
`
`In order to determine if Congress has successfully abrogated Eleventh Amendment
`
`immunity through the Fourteenth Amendment, the Supreme Court created a three part test. First,
`
`the courts must identify the Fourteenth Amendment evil or wrongdoing that Congress intended
`
`to remedy.23 Second, the court must consider whether there are sufficient state remedies for a
`
`20Hairston v. N.C. Agric & Tech. State Univ., No. 04 Civ. 1203, 2005 WL 2136923
`(M.D.N.C. Aug. 05, 2005).
`
`21Id.
`
`2217 U.S.C. § 511(a).
`
`23Fla. Prepaid Postsecondary Educ. Expense Bd. v. College Sav. Bank, 527 U.S. 627,
`639-640 (1999).
`
`7
`
`

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`Case 4:04-cv-00488-BRW Document 30 Filed 12/21/07 Page 8 of 13
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`state’s wrongdoing.24 Third, the court must examine whether there is proportionality and
`
`congruence between the injury to be prevented or remedied and the means provided in the statute
`
`to achieve those ends.25
`
`The Supreme Court has not specifically ruled whether the CRCA is a valid exercise of
`
`Congress’s power, but it has ruled that similar statutes, the TRCA and the Patent Act, were not
`
`appropriate uses of Congress’s power under the Fourteenth Amendment, and therefore are
`
`unconstitutional and invalid.26 Those statutes are nearly identical to the CRCA.27 Further, other
`
`courts who have examined the CRCA have held, like the TRCA and the Patent Act, is
`
`unconstitutional.28
`
`Applying the analysis the Supreme Court set in Florida Prepaid, the Fifth Circuit held
`
`that CRCA was an unconstitutional use of Congress’s power.29 The court found no evidence that
`
`24Id. at 643.
`
`25Id. at 645.
`
`26Fla. Prepaid Postsecondary Educ. Expense Bd. v. College Sav. Bank, 527 U.S. 627
`(1999). (Supreme Court holding that the Patent Remedy Act was unconstitutional). College Sav.
`Bank v. Fla. Prepaidpostsecondary Ed. Expense Bd., 527 U.S. 666 (1999). (Supreme Court
`holding that TRCA was not a valid use of Congressional power).
`
`27See TRCA at 15 U.S.C. § 1125; Patent Remedy Act at 35 U.S.C. § 271.
`
`28Rodriguez v. Texas Comm’n on the Arts, 199 F.3d 279 (5th Cir. 2000). Chavez v. Arte
`Publico Press, 204 F.3d 601 (5th Cir. 2000). De Romero v. Inst. of Puerto Rican Culture, 466 F.
`Supp. 2d 410 (D.P.R. 2006). Hairston v. N.C. Agric & Tech. State Univ., No. 04 Civ. 1203,
`2005 WL 2136923 (M.D.N.C. Aug. 05, 2005).
`
`29Chavez v. Arte Publico Press, 204 F.3d 601 (5th Cir. 2000).
`
`8
`
`

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`Case 4:04-cv-00488-BRW Document 30 Filed 12/21/07 Page 9 of 13
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`CRCA was created in response to a pattern of unconstitutional infringement of copyrights by the
`
`states.30
`
`Next, the court considered whether Congress had studied the existence and adequacy of
`
`state remedies for injured copyright owners cases where a state did infringe on their copyrights.31
`
`The court concluded that Congress barely considered the availability of state remedies for
`
`infringement.32 It noted:
`
`as if to emphasize its lack of interest in state remedies, Congress rejected the idea of
`granting state courts concurrent jurisdiction over copyright cases, an alternative
`solution that would have avoided any Eleventh Amendment problems. Congress
`rejected this solution not because it was an inadequate remedy, but because
`Congress believed concurrent jurisdiction would undermine the uniformity of law.33
`
`Consequently, the court determined that uniformity was an inadequate justification for the use of
`
`Fourteenth Amendment enforcement powers.
`
`Finally, the court examined whether there is a congruence and proportionality between
`
`the injury to be prevented or remedied and the means provided in the CRCA to achieve those
`
`ends.34 The court found that liability under the CRCA did not depend on proof of intentional
`
`infringement. Therefore, liability under the CRCA is broader than the rights secured under the
`
`Due Process Clause which only protects against intentional, not negligent, deprivations of
`
`30Id. at 605-606.
`
`31Id. at 606
`
`32Id.
`
`33Id. at 607.
`
`34Id.
`
`9
`
`

`
`Case 4:04-cv-00488-BRW Document 30 Filed 12/21/07 Page 10 of 13
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`property.35 Thus, the court determined that the CRCA failed the congruence and proportionality
`
`test in City of Boerne v. Flores.
`
`In sum, the Fifth Circuit determined that the CRCA was an improper exercise of
`
`Congressional legislative powers; therefore, Congress did not successfully abrogate Eleventh
`
`Amendment immunity.36 I agree with its reasoning. Hence, Plaintiff’s claim for money damages
`
`against the University of Arkansas at Little Rock and the individual Defendants in their official
`
`capacities is DISMISSED.
`
`C. Injunctive Relief Exception to the Eleventh Amendment
`
`Plaintiff also requests injunctive relief. The Supreme Court has permitted suits for
`
`prospective injunctive relief against state officials as an exception to Eleventh Amendment
`
`immunity under the doctrine of Ex Parte Young.37 State officials may be sued in their official
`
`capacities for prospective injunctive relief without violating the Eleventh Amendment.38 The
`
`same doctrine does not extend to a state or its agencies.39 So, individuals can be sued in their
`
`official capacity for prospective injunctive relief.
`
`Plaintiff’s Complaint prays for injunctive relief. Plaintiff has properly sued these
`
`individuals in their “official capacities” and asks that these individuals be prevented from further
`
`35Mr. Oman, the Register of Copyrights, noted that most copyright infringement by the
`states was unintentional.
`
`36Id.
`
`37Ex Parte Young, 209 U.S. 123 (1908).
`
`38Id..
`
`39Pediatric Specialty Care, Inc. v. Ark. Dep’t of Human Servs., 443 F.3d 1005, 1017 (8th
`Cir.2006)(holding that only state officials, not the state can be sued for injunctive relief).
`
`10
`
`

`
`Case 4:04-cv-00488-BRW Document 30 Filed 12/21/07 Page 11 of 13
`
`use of their copyrighted work. Thus, the Motion to Dismiss the Defendants Good and Caldwell,
`
`sued in their individual capacities, is DENIED.
`
`D. Waiver of Eleventh Amendment Immunity
`
`Plaintiff next argues that Defendants have waived their Eleventh Amendment immunity
`
`by sending a cease and desist letter along with a draft complaint.
`
`Generally, courts will find a waiver either if the state voluntarily invokes jurisdiction, or
`
`if the state makes a “clear declaration” that it intends to submit itself to federal court
`
`jurisdiction.40
`
`A state’s sovereign immunity is “personal privilege which it may waive at pleasure.”41
`
`Accordingly, the test for determining whether a State has waived its immunity from federal
`
`courts is a stringent one.42 The Supreme Court determined that “a state does not waive its
`
`immunity from federal suit by consenting to suit in state, by stating its intention ‘to sue and be
`
`sued,’ or by authorizing suits against it ‘in any court of competent jurisdiction.”43 Thus, the
`
`cease and desist letter, along with the complaint, was not an effective waiver of Eleventh
`
`Amendment immunity by Defendants.
`
`40College Sav. Bank v. Fla. Prepaidpostsecondary Ed. Expense Bd., 527 U.S. 666, 675
`
`(1999).
`
`41Clark v. Barnard, 108 U.S. at 447.
`
`42Atascadero State Hospital v. Scanlon, 473 U.S. 234, 241, 87 L. Ed 2d 171, 105 S. Ct.
`3142 (1985).
`
`43College Sav. Bank at 675-676 (1999).(quoting Florida Dept. of Health and
`Rehabilitative Servs. v. Florida Nursing Home Assn., 450 U.S. 147, 149-150 (1981).
`
`11
`
`

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`Case 4:04-cv-00488-BRW Document 30 Filed 12/21/07 Page 12 of 13
`
`E. The Arkansas Claims Commission
`
`Plaintiff next argues that the remedies provided by the state of Arkansas are inadequate
`
`relief from Defendants actions.
`
`In a recent Court of Appeals decision, the court determined that the state of Arkansas
`
`provided sufficient remedies for patent infringement so that it did not violate the Fourteenth
`
`Amendment. In Pennington Seed, Inc. & AgResearch Ltd. v. Produce Exchange No. 299, et al,44
`
`the plaintiffs contended that the University of Arkansas and University officials were subject to
`
`suit under the Eleventh Amendment because the state of Arkansas did not provide adequate
`
`remedies for patent infringement by the state. The court disagreed, and it held that the remedies
`
`supplied by the state of Arkansas were not so insufficient that they violated the Fourteenth
`
`Amendment, and that the infringement of a patent by a state may be actionable in federal courts
`
`only if the State provides no remedy, or only inadequate remedies, to injured patent owners for
`
`its infringement of their patent.45
`
`Although the current lawsuit involves an alleged copyright infringement, I agree with the
`
`analysis set forth in Pennington Seed; and I conclude that, although there was no state forum in
`
`which to contest copyright infringement claims, the other available remedies are not so
`
`insufficient that they violate the Fourteenth Amendment. In the present case, the Arkansas
`
`Claims Commission declared and enforced the parties liabilities under the contract, and awarded
`
`the Plaintiff the balance of the contract ($15,000). Although Plaintiff requests more relief, the
`
`44Pennington Seed, Inc. & AgResearch Ltd. v. Produce Exchange No. 299, et al, 457 F.3d
`1334 (Fed. Cir 2006).
`
`45Id. at 1340.
`
`12
`
`

`
`Case 4:04-cv-00488-BRW Document 30 Filed 12/21/07 Page 13 of 13
`
`award by the Claims Commission is not so inadequate that it violates the Fourteenth
`
`Amendment. Therefore, the University is not subject to suit under the Eleventh Amendment of
`
`the Constitution, and any money claims against it should be DISMISSED.
`
`II. Conclusion
`
` In sum, the claim for money damages against University, Good and Caldwell, sued in
`
`their official capacity is DISMISSED. The claim for injunctive relief remains.
`
`IT IS SO ORDERED this 21st day of December, 2007.
`
`/s/Wm. R. Wilson, Jr.
` UNITED STATES DISTRICT JUDGE
`
`
`
`13

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