`
`IN THE UNITED STATES DISTRICT COURT
`EASTERN DISTRICT OF ARKANSAS
`WESTERN DIVISION
`
`INFOMATH, INC.
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`V.
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`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
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` Pending are Defendants’ Motion (Doc. 4) and Amended Motion to Dismiss (Doc. 15), to
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`which Plaintiff responded (Docs. 8, 19).
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`Plaintiff requests damages, declaratory relief, and injunctive relief for copyright
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`infringement. Defendants argue that the claims should be dismissed for lack of subject matter
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`jurisdiction, since they are immune from suit under the Eleventh Amendment of the United
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`States Constitution.
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`I. Background
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`In March of 2000, Plaintiff InfoMath and Defendant University of Arkansas at Little
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`Rock (“University”) entered into a written contract to provide an internet based pre-calculus
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`course for Arkansas schools.1 Defendant Mary L. Good (“Good”) is Dean of the Donaghey
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`1Doc. No. 1, p. 2.
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`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
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`(“Caldwell”) was an employee of the University and served as the project coordinator for the
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`pre-calculus course.
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` Under the contract, InfoMath would design and develop the course and the University
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`would provide the course material. The University would retain copyright interests in all the
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`material it created. Caldwell would guide a project team composed of herself, University math
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`professors, and school teachers to develop the material. Caldwell and the University, however,
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`never provided any course material to InfoMath.2
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`When the University did not provide the course material, InfoMath contracted with third-
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`party teachers to create its own course content.3 InfoMath, however, allowed the University to
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`use this material as long as it maintained a contractual relationship with InfoMath.
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`InfoMath completed all the requirements of the initial contract and received excellent
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`performance reviews. At the request of the University, InfoMath also provided services outside
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`the scope of the original contract, like creating a database and website. InfoMath provided the
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`additional materials and services because they were assured by Caldwell that this was the
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`beginning of a long term relationship.4
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`In the spring of 2001, the University informed InfoMath that it would have to bid for the
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`right to host the website and database that it had already created. InfoMath lost the bid, but now
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`argues that it has exclusive copyright interests of all the course content it created. InfoMath
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`2Doc. No. 1, p. 2.
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`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.
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`4Doc. No. 1, p. 3.
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`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
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`interests in the InfoMath created course. The University has continued to use InfoMath’s course
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`since dissolving their contractual relationship in May of 2001.
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`InfoMath filed a claim to the Arkansas Claims Commission in order to determine the
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`rights of the parties under the contract. The Claims Commission unanimously found the
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`University liable and awarded $15,000 to InfoMath. The Claims Commission did not make a
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`ruling about copyright ownership or injunctive relief requested by InfoMath. Thus, InfoMath
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`contends that the ruling from the Claims Commission is inadequate and filed this suit.
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`II. Standard
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`A motion to dismiss should not be granted unless it appears beyond doubt that a plaintiff
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`can prove no set of facts which would entitle him to relief.5 The complaint’s allegations must be
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`accepted as true; and, the complaint, and all reasonable inferences arising from it, must be
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`construed in a plaintiff’s favor.6 A complaint should not be dismissed merely because the
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`complaint does not state with precision all elements that give rise to a legal basis for recovery.7
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`III. Discussion
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`A. Eleventh Amendment Sovereign Immunity
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`Defendants argue that they cannot be held liable under the Eleventh Amendment.
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`However Eleventh Amendment protection is not absolute; there are two exceptions. The first
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`5Thomas W. Garland, Inc. V. City of St. Louis, 596 F.2d 784, 787 (8th Cir. 1979).
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`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).
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`7Bramlet, 495 F.2d at 716; Smith v. Quachita Technical College, 337 F.3d 1079, 1080
`(8th Cir. 2003).
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`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
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`applies when a state waives its immunity to suit in federal court.9 Plaintiff argues that both
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`exceptions apply.
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`The Eleventh Amendment provides that “the judicial power of the United States shall not
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`be construed to extend to any suit in law or equity, commenced, or prosecuted against one of the
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`United States by citizens of another state, or by citizens or subjects of any foreign state.”10 In
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`determining the applicability of the Eleventh Amendment to the political subdivisions of the
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`state, this Court must,
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`[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
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`“Each state university . . . must be considered on the basis of its own particular circumstances”12
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`in determining if the university is a state instrumentality that enjoys the protection of the
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`Eleventh Amendment. As of 1985, the Eighth Circuit determined that the majority of cases
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`addressing the question of Eleventh Amendment immunity for public colleges and universities
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`held that these institutions are arms of their respective state governments and are immune from
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`8Fitzpatrick v. Bitzer, 427 U.S. 445 (1976).
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`9Barnes v. Missouri, 960 F.2d 63, 65 (8th Cir. 1992).
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`10U.S. Const. amend XI.
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`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).
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`12Greenwood, 778 F.2d at 453.
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`4
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`suit.13 The Greenwood court did not make the final determination whether the University of
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`Arkansas was immune from suit and remanded the case for that determination. The District
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`Court held that the University of Arkansas is immune from suits for damages under the Eleventh
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`Amendment.14
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`The Eleventh Amendment bars federal suits against public servants in their official
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`capacities when the “state is the real, substantial party of interest.”15 The Eleventh Amendment,
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`however, does not bar suits against a public servant in his official capacity when he is alleged to
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`have committed an unconstitutional act or illegal act because the state has no authority to order
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`such acts, and the official is therefore “stripped of his official or representative character.”16
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`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).
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`14Greenwood v. Ross, No. LR-C-79-406, 1988 WL 156151 (E.D. Ark. January 29, 1988).
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`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).
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`16Id. at 102.
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`5
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`Even in such cases, only injunctive relief is permitted because retroactive relief would have a
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`direct impact on the state treasury.17
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`In the present case, Plaintiff requests injunctive relief and money damages. However, the
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`Eleventh Amendment bars Plaintiff’s claims for money damages against the University and
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`Defendants sued in their official capacity. Accordingly, Defendants’ Motion to Dismiss the
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`University of Arkansas at Little Rock is GRANTED, and the request for money damages from
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`Good and Caldwell, acting in their official capacity, is GRANTED.
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`B. Copyright Remedy Clarification Act
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`Although the Eleventh Amendment prevents citizens from bringing suit against a state in
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`federal court, Congress may abrogate a state’s Eleventh Amendment immunity. In order to
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`successfully abrogate Eleventh Amendment immunity, Congress must: (1) clearly express its
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`intent to waive immunity, and (2) act under a valid exercise of power found in Section 5 of the
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`Fourteenth Amendment.18 This power is limited however. The Supreme Court held that “there
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`must be congruence and proportionality between the injury to be prevented or remedied and the
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`means adopted to that end.”19
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`In 1990, Congress enacted the Copyright Remedy Clarification Act (“CRCA”). In
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`addition to the CRCA, Congress passed the Patent and Plant Variety Protection Remedy
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`Clarification Act (“Patent Remedy Act”) and the Trademark Remedy Clarification Act
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`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).
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`18Seminole Tribe of Florida v. Florida, 517 U.S. 44, 55-71 (1996).
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`19City of Boerne v. Flores, 521 U.S. 507, 520 (1997).
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`6
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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
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`trademark, copyright and patent law.21 All three statutes waive the state’s Eleventh Amendment
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`immunity from liability for violations of federal trademark, copyright, and patent law.
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`The CRCA states,
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`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
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`Plaintiff asserts that the actions of the Defendants violated its copyright interests. Defendants
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`argue, however, that the CRCA is unconstitutional.
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`It is clear from the language of the CRCA that Congress intended to abrogate Eleventh
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`Amendment immunity. The question now turns on whether Congress acted under a valid
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`exercise of power found in Section 5 of the Fourteenth Amendment. It did not.
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`In order to determine if Congress has successfully abrogated Eleventh Amendment
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`immunity through the Fourteenth Amendment, the Supreme Court created a three part test. First,
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`the courts must identify the Fourteenth Amendment evil or wrongdoing that Congress intended
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`to remedy.23 Second, the court must consider whether there are sufficient state remedies for a
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`20Hairston v. N.C. Agric & Tech. State Univ., No. 04 Civ. 1203, 2005 WL 2136923
`(M.D.N.C. Aug. 05, 2005).
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`21Id.
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`2217 U.S.C. § 511(a).
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`23Fla. Prepaid Postsecondary Educ. Expense Bd. v. College Sav. Bank, 527 U.S. 627,
`639-640 (1999).
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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
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`congruence between the injury to be prevented or remedied and the means provided in the statute
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`to achieve those ends.25
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`The Supreme Court has not specifically ruled whether the CRCA is a valid exercise of
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`Congress’s power, but it has ruled that similar statutes, the TRCA and the Patent Act, were not
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`appropriate uses of Congress’s power under the Fourteenth Amendment, and therefore are
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`unconstitutional and invalid.26 Those statutes are nearly identical to the CRCA.27 Further, other
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`courts who have examined the CRCA have held, like the TRCA and the Patent Act, is
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`unconstitutional.28
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`Applying the analysis the Supreme Court set in Florida Prepaid, the Fifth Circuit held
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`that CRCA was an unconstitutional use of Congress’s power.29 The court found no evidence that
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`24Id. at 643.
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`25Id. at 645.
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`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).
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`27See TRCA at 15 U.S.C. § 1125; Patent Remedy Act at 35 U.S.C. § 271.
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`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).
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`29Chavez v. Arte Publico Press, 204 F.3d 601 (5th Cir. 2000).
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`8
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`CRCA was created in response to a pattern of unconstitutional infringement of copyrights by the
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`states.30
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`Next, the court considered whether Congress had studied the existence and adequacy of
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`state remedies for injured copyright owners cases where a state did infringe on their copyrights.31
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`The court concluded that Congress barely considered the availability of state remedies for
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`infringement.32 It noted:
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`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
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`Consequently, the court determined that uniformity was an inadequate justification for the use of
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`Fourteenth Amendment enforcement powers.
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`Finally, the court examined whether there is a congruence and proportionality between
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`the injury to be prevented or remedied and the means provided in the CRCA to achieve those
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`ends.34 The court found that liability under the CRCA did not depend on proof of intentional
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`infringement. Therefore, liability under the CRCA is broader than the rights secured under the
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`Due Process Clause which only protects against intentional, not negligent, deprivations of
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`30Id. at 605-606.
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`31Id. at 606
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`32Id.
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`33Id. at 607.
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`34Id.
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`9
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`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
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`test in City of Boerne v. Flores.
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`In sum, the Fifth Circuit determined that the CRCA was an improper exercise of
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`Congressional legislative powers; therefore, Congress did not successfully abrogate Eleventh
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`Amendment immunity.36 I agree with its reasoning. Hence, Plaintiff’s claim for money damages
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`against the University of Arkansas at Little Rock and the individual Defendants in their official
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`capacities is DISMISSED.
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`C. Injunctive Relief Exception to the Eleventh Amendment
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`Plaintiff also requests injunctive relief. The Supreme Court has permitted suits for
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`prospective injunctive relief against state officials as an exception to Eleventh Amendment
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`immunity under the doctrine of Ex Parte Young.37 State officials may be sued in their official
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`capacities for prospective injunctive relief without violating the Eleventh Amendment.38 The
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`same doctrine does not extend to a state or its agencies.39 So, individuals can be sued in their
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`official capacity for prospective injunctive relief.
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`Plaintiff’s Complaint prays for injunctive relief. Plaintiff has properly sued these
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`individuals in their “official capacities” and asks that these individuals be prevented from further
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`35Mr. Oman, the Register of Copyrights, noted that most copyright infringement by the
`states was unintentional.
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`36Id.
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`37Ex Parte Young, 209 U.S. 123 (1908).
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`38Id..
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`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).
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`10
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`use of their copyrighted work. Thus, the Motion to Dismiss the Defendants Good and Caldwell,
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`sued in their individual capacities, is DENIED.
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`D. Waiver of Eleventh Amendment Immunity
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`Plaintiff next argues that Defendants have waived their Eleventh Amendment immunity
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`by sending a cease and desist letter along with a draft complaint.
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`Generally, courts will find a waiver either if the state voluntarily invokes jurisdiction, or
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`if the state makes a “clear declaration” that it intends to submit itself to federal court
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`jurisdiction.40
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`A state’s sovereign immunity is “personal privilege which it may waive at pleasure.”41
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`Accordingly, the test for determining whether a State has waived its immunity from federal
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`courts is a stringent one.42 The Supreme Court determined that “a state does not waive its
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`immunity from federal suit by consenting to suit in state, by stating its intention ‘to sue and be
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`sued,’ or by authorizing suits against it ‘in any court of competent jurisdiction.”43 Thus, the
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`cease and desist letter, along with the complaint, was not an effective waiver of Eleventh
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`Amendment immunity by Defendants.
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`40College Sav. Bank v. Fla. Prepaidpostsecondary Ed. Expense Bd., 527 U.S. 666, 675
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`(1999).
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`41Clark v. Barnard, 108 U.S. at 447.
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`42Atascadero State Hospital v. Scanlon, 473 U.S. 234, 241, 87 L. Ed 2d 171, 105 S. Ct.
`3142 (1985).
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`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).
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`E. The Arkansas Claims Commission
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`Plaintiff next argues that the remedies provided by the state of Arkansas are inadequate
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`relief from Defendants actions.
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`In a recent Court of Appeals decision, the court determined that the state of Arkansas
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`provided sufficient remedies for patent infringement so that it did not violate the Fourteenth
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`Amendment. In Pennington Seed, Inc. & AgResearch Ltd. v. Produce Exchange No. 299, et al,44
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`the plaintiffs contended that the University of Arkansas and University officials were subject to
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`suit under the Eleventh Amendment because the state of Arkansas did not provide adequate
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`remedies for patent infringement by the state. The court disagreed, and it held that the remedies
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`supplied by the state of Arkansas were not so insufficient that they violated the Fourteenth
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`Amendment, and that the infringement of a patent by a state may be actionable in federal courts
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`only if the State provides no remedy, or only inadequate remedies, to injured patent owners for
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`its infringement of their patent.45
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`Although the current lawsuit involves an alleged copyright infringement, I agree with the
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`analysis set forth in Pennington Seed; and I conclude that, although there was no state forum in
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`which to contest copyright infringement claims, the other available remedies are not so
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`insufficient that they violate the Fourteenth Amendment. In the present case, the Arkansas
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`Claims Commission declared and enforced the parties liabilities under the contract, and awarded
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`the Plaintiff the balance of the contract ($15,000). Although Plaintiff requests more relief, the
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`44Pennington Seed, Inc. & AgResearch Ltd. v. Produce Exchange No. 299, et al, 457 F.3d
`1334 (Fed. Cir 2006).
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`45Id. at 1340.
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`12
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`award by the Claims Commission is not so inadequate that it violates the Fourteenth
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`Amendment. Therefore, the University is not subject to suit under the Eleventh Amendment of
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`the Constitution, and any money claims against it should be DISMISSED.
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`II. Conclusion
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` In sum, the claim for money damages against University, Good and Caldwell, sued in
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`their official capacity is DISMISSED. The claim for injunctive relief remains.
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`IT IS SO ORDERED this 21st day of December, 2007.
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`/s/Wm. R. Wilson, Jr.
` UNITED STATES DISTRICT JUDGE
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`
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`13