Marketing Info v. Board of Trustees, et al

Filing 13

RESPONSE to Motion re 12 MOTION to Dismiss filed by Marketing Information Masters, Inc.. (Attachments: # 1 Exhibit Plaintff's Exhibit A in Support of Opposition to Motion to Dismiss# 2 Exhibit Plaintff's Exhibit B in Support of Opposition to Motion to Dismiss# 3 Exhibit Plaintff's Exhibit C (Part 1) in Support of Opposition to Motion to Dismiss# 4 Exhibit Plaintff's Exhibit C (Part 2) in Support of Opposition to Motion to Dismiss)(Goonan, Gregory)

Marketing Info v. Board of Trustees, et al

Doc. 13

1 Gregory P. Goonan (Cal. Bar #119821) 2 600 West Broadway, Suite 400 3 Tel: [phone] 10 11 12 Marketing Information Masters, Inc., a 13 14 15
California corporation, Plaintiff, vs. The Board of Trustees of the California State through its subdivision San Diego State individual, Case No. 06 CV 1682 JAH (JMA) UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF CALIFORNIA San Diego, CA 92101 Fax: [phone] Attorneys for Plaintiff The Affinity Law Group APC

5 Marketing Information Masters , Inc.

16 University System, a public entity acting 17 University; and Robert A. Rauch, an 18 19 20 21 22 23 24 25 26 27 28
Defendants.

PLAINTIFF'S MEMORANDUM OF POINTS AND AUTHORITIES IN OPPOSITION TO DEFENDANTS' MOTION TO DISMISS FIRST AMENDED COMPLAINT Date: January 18, 2007 Time: 3:00 p.m. Court: 11 (Hon. John A. Houston)

____________________________________________________________________________________________ PLAINTIFF'S MEMORANDUM OF POINTS AND AUTHORITIES IN OPPOSITION TO DEFENDANTS' MOTION TO DISMISS FIRST AMENDED COMPLAINT -1 Dockets.Justia.com

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

TABLE OF CONTENTS Table of Authorities . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4

I.

PRELIMINARY STATEMENT AND SUMMARY OF ARGUMENT . . . . . . . . . . . . . . 6

II.

FACTUAL AND PROCEDURAL BACKGROUND . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9

III.

ARGUMENT . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 12 A. Th is Motion Should Be Denied Because SDSU Is Not Immune From Being Sued For Copyright Infringement In This Court . . . . . . . . . . . . . . . . 12 1. Overview . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 13 2. The Applicable Analytical Framework . . . . . . . . . . . . . . . . . . . . . . . . . 14 3. Congress Expressed in "Unmistakably Clear" Language that the CRCA Abrogated State Immunity Under the Eleventh Amendment for Copyright Infringement Lawsuits . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 16 4. The CRCA is a Constitutional Exercise of Congress' Authority Pursuant to the Enforcement Clause of the Fourteenth Amendment . . . . . . . . . . . . . . .. . . . . . . . . . . . . 17 a. The CRCA was enacted in response to substantial evidence of copyright infringement by the States and their instrumentalities . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .19 b. Congress determined ther e were no available state remedies for copyright infringement . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .20 c. Congress tailored the remedy to be provided by the CRCA to the magnitude of the harm to be prevented . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 21

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1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28
B.

5. The Supreme Court Decision in Florida Prepaid Does Not Support a Finding that the CRCA is Unconstitutional . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 21 Rauch Is Not Entitled To Any Relief By This Motion . . . . . . . . . . . . . . . . . . . . . 22 1. The Declarations Submitted By Rauch Cannot Be Considered In Connection With This Motion And Should Be Stricken From The Record . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 23 2. Rauch Does Not Enjoy Any Immunity From Suit . . . . . . . . . . . . . . . . . . . . . . 23 3. MIMI's State Law Claims Against Rauch Are Not Preempted . . . . . . . . . . . . 25

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1 2 3 4
Cases:

TABLE OF AUTHORITIES

American Tobacco Co. v. Werckmeister, 207 U.S. 284 (1907) . . . . . . . . . . . . . . . . . . . . . . . . . . 1 8

5 Atascadero State Hospital v. Scanlon, 473 U.S. 234 (1985) . . . . . . . . . . . . . . . . . . . . . . . . . . . . 15 6 Briarpatch Ltd. v. Phoenix Pictures, Inc. , 373 F.3d 296 (2d Cir. 2004) . . . . . . . . . . . . . . . . . . . 25 7 Chavez v. Arte Publico Press , 204 F.3d 601 (5th Cir. 2000) . . . . . . . . . . . . . . . . . . . . . . . . . . . . 14 8 City of Boerne v. Flores, 521 U.S. 507 (1997) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 14,18 9 10
Fitzpatrick v. Bitzer , 427 U.S. 445 (1976) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 14, 22 Florida Prepaid Postsecondary Educational Expense Bd. v. College Savings Bank,

11 527 U.S. 627 (1999) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 21 12 Katzenbach v. Morgan, 384 U.S. 641 (1966) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 17, 22 13 14 15 16 18 19
Kentucky v. Graham, 473 U.S. 159 (1985) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 24 Kimel v. Florida Board of Regents, 528 U.S. 62 (2000) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 19 Lambert v. City of Kenner, 1993 WL 99188 (E.D. La. 1993) . . . . . . . . . . . . . . . . . . . . . . . . . . . 14 971 F.2d 302 (9 Cir. 1992) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1 8 Pareto v. FDIC, 139 F.3d 696 (9th Cir. 1998) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 10, 22

17 New Kids on thethBlock v. News America Publishing, Inc.,

th 20 Parks School of Business, Inc. v. Symington , 51 F.3d 1480 (9 Cir. 1995) . . . . . . . . . . . . . . . . . 22 th 21 Richard Anderson Photography v. Brown , 852 F.2d 114 (4 Cir. 1988) . . . . . . . . . . . . . . . . . . . .24

22 Roth v. Pritikin, 710 F.2d 934 (2d Cir. 1983) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 18 23 Seminole Tribe of Florida v. Florida, 517 U.S. 44 (1995) . . . . . . . . . . . . . . . . . . . . . . .. . . . passim 24 Unix System Laboratories, Inc. v. Berkeley Software Design, Inc., 25 832 F. Supp. 790 (D.N.J. 1993) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 14 26 27 28
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1 Constitution, Statutes and Rules: 2 U.S. CONST. amend. XI V . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . passim 3 U.S. CONST. amend. XIV, § 5 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . passim 4 17 U.S.C. § 301(a) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 25 5 6 7 8 10 11 Other Authorities : 12 5B Wright & Miller, Federal Practice and Procedure, § 1337 . . . . . . . . . . . . . . . . . . . . . . . . . . 23 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28
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17 U.S.C. § 501(a) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . passim 17 U.S.C. § 51 1(a) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . passim 28 U.S.C. § 1338(a) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 20

9 Fed.R.Civ.P. 12(b)(6) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . passim

1

Defendants Board of Trustees of the California State University System, acting through

2 and representing its subdivision San Diego State University (hereinafter "SDSU") and Robert A. 3 Rauch ("Rauch") collectively ha ve filed a motion to dismiss the first amended complaint (the 4
"Complaint") of plaintiff Marketing Information Masters, Inc. ("MIMI") pursuant to Rules

5 6 7 8

12(b)(1) and 12(b)(6) of the Federal Rules of Civil Procedure. MIMI hereby respectfully submits this memorandum of points and authorities in opposition to Defendants' motion to dismiss.

9 I. 10

PRELIMINARY STATEMENT AND SUMMARY OF ARGUMENT As the Court undoubtedly is aware from its own personal knowledge and experience, the

11 use of materials protected by the intellectual p roperty laws of the United States permeates the life 12 of literally every American. Nowhere is this more true than in the academic environment . Indeed, 13 it cannot be seriously disputed that academic institutions like SDSU are major users of materials 14 protected by the US intellectual property laws ­ and especially the copyright laws. 15
Literally every day, academic institutions like defendant SDSU use myriad materials

16 protected by copyright in their teaching, research, administrative and business activities. The most 17 obvious example is the use by academic institutions of textbooks, journal articles, and other 18 written and tangible materials as teaching materials in the classroom setting. But the use of 19 copyrighted materials by academic institutions like SDSU goes far beyond just books and other 20 written classroom materials. In this digital age, academic institutions now regularly use 21 multimedia materials, computer materials, music, art and graphics in connection with the teaching, 22 entertainment and recreation of their students. And the academic institutions also use myriad 23 computer programs (such as operating systems, e- mail programs, spreadsheet and accounting 24 programs, databases, etc.) to perform their day -to-day administrative functions. 25 Imagine a world (and a legal system) where certain academic institutions (like defendant 26 SDSU here) c ould evade the limitations, protections and liability of the copyright laws that apply 27 to every other business and entity in the United States (including the federal government and its 28
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1 instrumentalities) simply because of the fortuity that such institutions happen to be state-run 2 institutions. Under such a scenario, state-run academic institutions would be free to operate what 3 are commonly-known as textbook "mills" whereby only one copy of a textbook and/or other 4 written materials would be purchased and then photocopied for all students without the approval 5 or compensation of the copyright owner. Or an institution could purchase one (or a few) copies of 6 a needed computer program (for example, Microsoft Windows, Word, Excel, etc.) and then copy 7 the program onto the computers of as many users as wanted to have access to the programs 8 without obtaining the necessary number of licenses for such use of the computer programs. Or an 9 in stitution could make unlimited and unrestricted use of artwork, music, sports logos, graphical 10 materials and the like without regard for the copyright protection attached to such materials. 11
While on first reading the Court may perceive that the scenarios outlined above may be

12 far -fetched, such scenarios describe exactly the danger and harm that would result if the immunity 13 argument made by Defendants as their principal argument in support of the present motion were
1 14 correct . Under Defendants' view of the world, the states (and therefore their instrumentalities

15 like defendant SDSU) are absolutely immune from liability or suit under the Copyright Act no
2 16 matter how egregiously or outrageously SDSU might infringe another's copyright rights.

17

Fortunately for p laintiff MIMI and other copyright owners, the United States Congress

18 identified the specific problems that would result if states were provided with blanket immunity 19 from copyright infringement liability and lawsuits, and enacted express and specific legis lation to 20 make crystal clear that the states and their instrumentalities are subject to copyright infringement 21 liability just like any other person or entity who infringes a copyright. Acting pursuant to its 22 authority under the Fourteenth Amendment to the United States Constitution ­ which authorizes 23
1

24 suits so any and all such suits must be brought in federal court. So, in raising its claim of 26 28

As this Court knows, the federal courts have exclusive jurisdiction over copyright infringement

25 infringement with impunity, yet never be sued for such infringement because it allegedly enjoys
sovereign immunity. 2 Defendants' immunity argument is especially egregious and hard to swallow when it is considered (as will be shown through the discovery in this case) that SDSU has not hesitated to 27 file suit to protect its own intellectual property rights when SDSU believed infringement or misappropriation had occurred.

supposed sovereign immunity, SDSU essentially takes the position that it can engage in copyright

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1 Congress to abrogate state immunity when necessary to prevent the taking of property without due 2 process of law (such as occurs in the case of a copyright infringement by a state) ­ Congress in 3 1990 enacted the "Copyright Remedy Clarification Act (the "CRCA"). 4
Critically for purposes of the present motion, the CRCA modified and amended the

5 language of Section 501(a) of the Copyright Act (17 U.S.C. § 501(a)), the statute that creates a 6 federal cause of action fo r copyright infringement, to make express and absolutely clear that the 7 states and their instrumentalities were subject to federal court copyright infringement lawsuits just 8 like all other persons and entities in the United States. Likewise, the CRCA adde d Section 511 to 9 the Copyright Act, which plainly and unambiguously provides that the States and their 10 instrumentalities are not immune from suit for copyright infringement under the Eleventh 11 Amendment. 12
T he language of Sections 501(a) and 511 of the Copyright Act subjecting the states and

13 their instrumentalities like SDSU to copyright infringement lawsuits in federal court remains a 14 part of the statutory language of the Copyright Act as of the filing of this opposition. Critically, 15 the amendments to the Co pyright Act that resulted from enactment of the CRCA were expressly 16 approved by the United States Copyright Office and also were universally sought and approved by
3 17 myriad persons and entities engaged in businesses involving copyrighted materials.

18

Nevertheless, by the present motion, SDSU asks this Court to take the extraordinary step

19 of overriding the will and legislative authority of the United States Congress and declaring 20 unconstitutional the relevant portions of Sections 501(a) and 511 of the Copyright Act. But as will 21 be d iscussed below, there is no basis for this Court to override the considered judgment of the 22 legislative branch and declare the CRCA unconstitutional. On the contrary, in enacting the 23
3

24 endeavors in the United States -- were among the many persons and entities who expressed

For example, the following businesses and entities ­ literally running the gamut of the creative

25 evidence and testimony to Congress and sought the legislation that ultimately became the CRCA: 26 Software Publishers Association; Broadcast Music, Inc. (BMI); American Journal of Nursing; 27 Handling Services; Music Publishers Association of the United States; Songwriter's Guild of 28
America; and the American Society of Composers, Authors and Publishers (ASCAP). Association of American University Presses, Inc.; Association of American Publishers, Inc.; Motion Picture Association of America (MPAA); Harcourt Brace Jovanovich, Inc.; Information
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concern to the Congress about damage to their copyright rights by the states, so they presented

1 CRCA, Congress complied in full with the requirem ents for the abrogation of the States' 2 immunity under the Eleventh Amendment as explained in the well-settled Supreme Court 3 precedents preceding the CRCA. 4
Because passage of the CRCA was a valid and lawful exercise of Congress' legislative

5 authority, SDSU does not have any sovereign immunity from the present suit since such 6 immunity, to the extent it ever existed at all, has been plainly and expressly abrogated by Sections 7 501(a) and 511 of the Copyright Act. SDSU's request for dismissal pursuant to FRCP 1 2(b)(6) on 8 the grounds of sovereign immunity consequently must be denied. 9
Defendant Rauch also seeks dismissal by this motion on the ground that he was an

10 employee of SDSU and thus allegedly is immune to the same extent as SDSU. MIMI has sued 11 Rauch both i n his individual capacity (making this lawsuit a so-called "personal capacity suit" 12 against Rauch) as well as in his potential role as a SDSU employee. Because this is a 12(b) 13 motion, MIMI's allegations must be accepted as true and Rauch cannot introduce extrinsic 14 evidence in support of the motion. Consequently, the two declarations submitted by Rauch in 15 support of this motion cannot be considered by the Court and should be stricken from the record. 16
As will be shown below, even if SDSU enjoys sovereign im munity which precludes this

17 suit, such immunity does not shield Rauch from liability for committing copyright infringement
4 18 himself or for inducing and aiding and abetting SDSU to commit copyright infringement.

19 Likewise, as further discussed below, the st ate law claims asserted by MIMI against Rauch are not 20 preempted by the Copyright Act because such claims seek to vindicate rights different than rights 21 that can and are protected by copyright. Consequently, Rauch is not entitled to any relief by this 22 motion. 23 II. 24 26 28
FACTUAL AND PROCEDURAL BACKGROUND Because the present motion has been brought pursuant to FRCP 12(b)(6), the Court must

25 accept as true all material allegations in MIMI's Complaint, as well as all reasonable inferences
4

27 MIMI's copyright. All it means is that SDSU cannot be sued in federal court for such
infringement.

Of course, even if SDSU is immune (which it is not), that does not mean SDSU did not infringe

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th 1 therefrom. [ Pareto v. FDIC, 139 F.3d 696, 699 (9 Cir. 1998).] The allegations of MIMI's

2 Complaint establish the following facts: 3
T his is an action for copyright infringement, conversion, misappropriation and unfair

4 business practices under federal and California law. As alleged in MIMI's Complaint, for a 5 number of years MIMI and its owner Michael Casinelli performed economic impact studies for the 6 San Diego Holiday Bowl committee and provided the Holiday Bowl with written reports setting 7 forth and discussing MIMI's analysis and conclusions about the Holiday Bowl's economic impact 8 on the San Diego region. [Complaint ¶¶ 2-4; 25-26.] 9
The written report at issue in this case is MIMI's 2003 economic impact report (the "2003

10 Report"), which is a work registered under and protected by the copyright laws of the United 11 States. [Complaint ¶ 29.] As alleged in MIMI's Complaint, as least for the 2004 Holiday Bowl 12 (and possibly for subsequent games), the Holiday Bowl committee retained t he Center for 13 Hospitality and Tourism Research at SDSU (the "SDSU Center for Hospitality and Tourism 14 Research") to conduct the study of the economic impact of the 2004 game. Defendant Rauch was 15 the individual with primary responsibility for the project. [Complaint ¶¶ 7-9; 30-33.] 16
Unfortunately, Rauch and SDSU di d not develop their own methodology, practices or

17 analysis framework to conduct the 2004 study, analyze the data obtained therefrom, or reach 18 conclusions from such data as they were required to do under the applicable laws. Instead, as 19 explained in MIMI's complaint, Rauch and SDSU obtained a copy of the 2003 Report and then 20 simply (and illegally) misappropriated MIMI's ideas, methodologies, practices and analytical 21 framework to conduct the 2004 study. To further compound their wrongdoing, Rauch and SDSU 22 blatantly and intentionally copied and plagiarized the copyrighted 2003 Report to generate a 23 written report for the Holiday Bowl regarding the 2004 study. [Complaint ¶¶ 10-11; 34 -39.] 24
The actions of Rauch and SDSU were intentional copyright infringement in the extreme,

25 and also constituted the conversion and misappropriation of MIMI's property not covered by the
5 26 copyright on the 2003 Report. Indeed, as alleged in MIMI's Complaint, MIMI is informed and

27 28

5

To make the wrongdoing of Rauch and SDSU even worse, the data and statistics presented by
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1 believes that SDSU conducted an internal investigation about this matter and itself concluded that 2 Rauch was guilty of plagiarism and copyright infringement. 3
After obtaining federal registration of the copyright in the 2003 Report and complying with

4 the requirements of the California statutes regarding claims against governmental entities like 5 SDSU, MIMI filed its original complaint in this matter on August 18, 2006. [Complaint ¶ 16.] 6 Defendant SDSU responded by a motion to dismiss pursuant to FRCP 12(b). Rauch "joined" in 7 such motion. 8
As the Court will recall, one of the principal arguments made by SDSU and Rauch in

9 connection with their first motion to dismiss was that MIMI's complaint should be dismissed for 10 lack of subject matter jurisdiction because MIMI had not yet obtained the formal registration 11 certificate for the 2003 Report at the time it filed its original complaint. For the reasons explained 12 in MIMI's opposition to Defendants' earlier motion to dismiss, such argument by Defendants was 13 frivolous and bogus. Nevertheless, in order to resolve any q uestions about the Court's subject 14 matter jurisdiction, MIMI filed its first amended complaint (the "Complaint") to provide the 15 details of MIMI's copyright registration (which had been issued as of the date of MIMI's 16 opposition to the earlier motion to dismiss). 17
Following the filing of MIMI's first amended complaint, the Court issued an order denying

18 as moot the earlier motion to dismiss because of the filing of the first amended complaint. MIMI 19 neither expected nor intended such result ­ it filed the firs t amended complaint for the sole 20 purposes of eliminating the subject matter jurisdiction argument and dismissing the pendant state 21 law claims against SDSU. 22 23 24 25 26 27 28
Defendants ultimately responded to the first amended complaint by filing the present Rauch and the SDSU Center for Hospitality and Tourism Research to the Holiday Bowl were false, distorted and over -inflated, and did not accurately reflect the true economic impact of the 2004 Holiday Bowl on the San Diego community. [Complaint ¶ 11.] Such falsification and distortion of the economic data was caused in large part by the fact that Rauch and the SDSU Center for Hospitality and Tourism Research simply copied MIMI's 2003 Economic Impact Report rather than independently performing a legitimate economic impact study and then independently writing a report about such study. [Id.]
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1 motion to dismiss, which is nothing but a rehash of the arguments made in the earlier motion to 2 dismiss (with the exception of the subject matter jurisdiction argument). Unfortunately, however, 3 in rehashing their old arguments, Defendants choose to level accusations at MIMI that are, with 4 due respect, ridiculous. 5
Right from the outset of their memorandum, Defendants opine that the timing of MIMI's

6 first amended complaint "should raise some eyebrows" and accuse MIMI of "pure 7 gamesmanship." Such accusations are as baseles s as they are insulting. Defendants do not make 8 any attempt to explain why the filing of the first amended complaint was "pure gamesmanship" or 9 should "raise some eyebrows." The reason why Defendants have not offered any factual support 10 for their unseemly rhetoric is plain and obvious: As noted, the first amended complaint was filed 11 solely to eliminate the subject matter jurisdiction argument and to benefit SDSU by dismissing the 12 pendant state claims against it. Had Defendants not made their bogus subject matter jurisdiction 13 argument in the first place, the filing of a first amended complaint would not have been necessary 14 at all. Certainly, Defendants should not now be complaining about the filing of a pleading that 15 was filed in response to Defendants' own frivolous argument. 16
In any event, the present motion now presents for decision the immunity and preemption

17 arguments that Defendants previously raised by their earlier motion to dismiss. As discussed 18 below, neither the immunity argument nor the preemption argument has any merit, so this motion 19 should be denied in its entirety. 20 III. 21 22 23
ARGUMENT A. This Motion Should Be Denied Because SDSU Is Not Immune From Being Sued For Copyright Infringement In This Court SDSU seeks dismissal pursuant to FRCP 12(b)(6) on the grounds that it is immune

24 pursuant to the Eleventh Amendment from being sued for copyright infringement in federal courts 25 like this one. A s the Court might expect, the question of state sovereign immunity against 26 copyright infringement claims is a complicated issue of constitutional law to which MIMI easily 27 could devote 50 pages to brief. 28
Given the page limitations for briefs under the Court's local rules, MIMI will explain to ____________________________________________________________________________________________ PLAINTIFF'S MEMORANDUM OF POINTS AND AUTHORITIES IN OPPOSITION TO DEFENDANTS' MOTION TO DISMISS FIRST AMENDED COMPLAINT - 12 -

1 the Court as concisely as possible why SDSU in fact does not enjoy t he immunity it asserts. 2
In further support of its opposition to Defendants' motion, MIMI also submits herewith

3 various legislative and administrative materials as Exhibits A through C, which materials provide 4 further detail and analysis why Defendants' imm unity argument must fail. The documents 5 submitted as Exhibit A are excerpts from the testimony and evidence submitted to the United 6 States Senate in connection with the Senate's investigation and consideration of the CRCA. The 7 documents submitted as Exhibit B similarly are excerpts from the testimony and evidence 8 submitted to the United States House of Representatives in connection with the House's 9 consideration of the CRCA. Finally, the documents submitted as Exhibit C are excerpts of the 10 Comments submi tted to the United States Copyright Office in connection with the Copyright 11 Office's work with the Congress in connection with the CRCA. 12
If the Court believes that it requires more detailed briefing, MIMI stands ready upon notice

13 from the Court to submit b riefing and/or evidence that more extensively deals with the issue of 14 state immunity from copyright infringement lawsuits. 15 16
1. Overview Defendants urge in their moving papers that MIMI's Complaint supposedly "calls on this

17 Court to ignore established author ity and adopt a rule of law that permits [MIMI] to sue the State 18 for infringement." Such a statement is inaccurate and turns the applicable analytical framework 19 on its head. The Court does not need to "adopt a rule of law that permits [MIMI] to sue 20 [Defe ndants] for infringement." In enacting the CRCA, Congress already has enacted and adopted 21 such a rule. As a result of Congress' actions in enacting the CRCA, the plain and unambiguous 22 language of Sections 501(a) and 511 of the Copyright Act expressly authorize MIMI's suit against 23 Defendants. 24
To be sure, the issue of whether a state can be sued for copyright infringement is a matter

25 of ongoing controversy in the federal courts. Neither the United States Supreme Court nor the 26 Ninth Circuit has ever address ed such issue. Certainly, neither the Supreme Court nor the Ninth 27 Circuit has ever declared the CRCA unconstitutional as Defendants now ask this Court to do. 28
As De fendants correctly note at pages 11-12 of its memorandum, the Fifth Circuit and a ____________________________________________________________________________________________ PLAINTIFF'S MEMORANDUM OF POINTS AND AUTHORITIES IN OPPOSITION TO DEFENDANTS' MOTION TO DISMISS FIRST AMENDED COMPLAINT - 13 -

1 few federal trial courts have found the CRCA unconstitutional. No other federal appellate court 2 other than the Fifth Circuit has invalidated the CRCA. Equally important, other district courts that 3 have addressed the viability of the CRCA have upheld the constitutionality of Congress' 4 abrogation of state immunity by the CRCA. [ See Unix System Laboratories, Inc. v. Berkeley 5 Software Design, Inc., 832 F. Supp. 790, 799 (D. N.J. 1993); Lambert v. City of Kenner , 1993 WL 6 99188 (E.D. La. 1993).] 7
T he Unix System case decided by the District of New Jersey dealt with the issue of whether

8 the plaintiff could proceed with copyright infringement claims against the Regents of the 9 University of California. There is no legitimate distinction between the defendant in the Unix 10 System case and SDSU here ­ both the UC system and SDSU are educational institutions operated 11 by the State of California. Critically, the district court in the Unix System case found that the 12 CRCA was a valid and constitutional exercise of Congress' power to abrogate state immunity 13 under the Eleventh Amendment for copyright infringement claims, and accordingly allowed the 14 plaintiff to proceed with copyright claims against the University of California that arose after the 15 enactment of the CRCA. 16
For the reasons discussed below, the cases cited by Defendants in support of this motion

17 were wrongly decided and should not be followed by this Court. Instead, just as the district court 18 did in the Unix System case, this Court should reject SDSU's assertion of immunity under the 19 Eleventh Amendment. 20 21
2. The Applicable Analytical Framework There can be no dispute that, as a general proposition of law, states and their

22 instrumentalities are immune from suit in federal courts unless there has been consent to suit. But 23 such immunity is not absolute. On the contrary, the law is well-settled that Congress has the 24 authority to abrogate state sovereign immunity by passing appropriate legislation so long as 25 Congress satisfies two requirements. First, Congress must express i n "unmistakably clear" 26 language in the legislation itself its intention to abrogate the state's immunity. In addition, 27 Congress must act pursuant to a constitutional grant of power authorizing it to enact the abrogating
atute. [See, e.g. Fitzpatrick v. Bitzer, 427 U.S. 445 (1976); City of Boerne v. Flores , 521 U.S. 28 st____________________________________________________________________________________________
PLAINTIFF'S MEMORANDUM OF POINTS AND AUTHORITIES IN OPPOSITION TO DEFENDANTS' MOTION TO DISMISS FIRST AMENDED COMPLAINT - 14 -

1 507, 519-20 (1997); Seminole Tribe of Florida v. Florida, 517 U.S. 44, 55 (1995).] 2
In 1985, the Supreme Court issued its decision in Atascadero State Hospital v. Scanlon,

3 473 U.S. 234 (1985 ), by which the Supreme Court appeared to expand the situations where states 4 could be found immune from suit in federal court. In the 100 years before the Atascadero 5 decision, there were only four published federal decisions in copyright infringement cases 6 involving Eleventh Amendment immunity. However, in the three years following Atascadero, six 7 such suits arose and were all dismissed by the district courts on Eleventh Amendment grounds. In 8 all such cases, the defendant state asserted complete immunity from damages under the federal 9 copyright law, leaving the copyright holders without any remedy for the states' infringement given 10 exclusive federal jurisdiction for copyright infringement cases. [ See Copyright Remedy 11 Clarification Act and Copyright Offic e Report on Copyright Liability of States: Hearings on H.R. 12 1131 Before the Subcommittee on Courts, Intellectual Property and the Administration of Justice
st 13 of the Committee on the Judiciary (the "House Hearings"), 101 Congress 51 (1989) (Exhibit B

14 hereto).] 15
Given this untenable situation, Congress decided that remedial legislation was needed to

16 make crystal clear that the states were in fact subject to copyright infringement lawsuits in federal 17 courts and were not immune from such suits under the Eleventh Amendment. [See The Copyright 18 Clarification Act: Hearing on S. 497 Before the Subcommittee on Patents, Copyrights and
st 19 Trademarks of the Committee on the Judiciary (the "Senate Hearing"), 101 Congress 1, 10, 52,

20 54, 61 (Exhibit A hereto.] The result was the passage in 1990 of the Copyright Remedy 21 Clarification Act (the "CRCA"), P.L. 101-553, 104 Stat.2749. 22
Critically for purposes of the present motion, the CRCA modified and amended the

23 language of Section 501(a) of the Copyright Act (17 U.S.C. § 501(a)), the statute that creates a 24 federal cause of action for copyright infringement, to make express and absolutely clear that the 25 States and their instrumentalities were subject to federal court copyright infringement lawsuits just 26 like all other persons and entities in the United States. Likewise, the CRCA added Section 511 to 27 the Copyright Act, which plainly and unambiguously provides that the States and their
strumentalities are not immune from suit for copyright infringement under the Eleventh 28 in____________________________________________________________________________________________
PLAINTIFF'S MEMORANDUM OF POINTS AND AUTHORITIES IN OPPOSITION TO DEFENDANTS' MOTION TO DISMISS FIRST AMENDED COMPLAINT - 15 -

1 Amendment . 2
The language of Sections 501(a) and 511 of the Copyright Act subjecting the States and

3 their instrumentalities like SDSU to copyright infringement lawsuits in federal court remains a 4 part of the statutory language of the Copyright Act as of the filing of this opposition. So, in order 5 to prevail on its FRCP 12(b)(6) motion, SDSU must convince this Court to override the will and 6 legislative authority of the United States Congress and declare unconstitutional the relevant 7 portions of Sections 501(a) and 511 of the Copyright Act. 8
As discussed herein, there is no basis for this Court to override the considered judgment of

9 the legislative branch and declare the CRCA unconstitutional. On the contrary, in enacting the 10 CRCA, Congress complied in full with the req uirements for the abrogation of the States' 11 immunity under the Eleventh Amendment as explained in the well-settled Supreme Court 12 precedents preceding the CRCA. Congress clearly and expressly abrogated whatever immunity 13 may have existed in favor of the States for copyright infringement lawsuits in federal court. 14 Congress also validly acted pursuant to its power under the Enforcement Clause of the Fourteenth 15 Amendment in enacting the CRCA. 16
Because passage of the CRCA was a valid and lawful exercise of Congress' legislative

17 authority, SDSU does not have any sovereign immunity from the present suit since such 18 immunity, to the extent it ever existed at all, has been plainly and expressly abrogated by Sections 19 501(a) and 511 of the Copyright Act. SDSU's request for dismissal pursuant to FRCP 12(b)(6) on 20 the grounds of sovereign immunity consequently must be denied 21 22 23 24
3. Congress Expressed in "Unmistakably Clear" Language that the CRCA Abrogated State Immunity Under the Eleventh Amendment for Copyright Infringement Lawsuits. As discussed above, the first step in the inquiry whether legislation passed by Congress

25 abrogating state immunity is a constitutional exercise of Congressional power is whether Congress 26 expressed in "unmistakably clear" language in the legislation itself its intention to abrogate the 27 state's immunity. Here, there cannot be any question or legitimate dispute that the CRCA satisfies
is prong of the constitutional inquiry. Section 501(a) of the Copyright Act has long provided 28 th____________________________________________________________________________________________
PLAINTIFF'S MEMORANDUM OF POINTS AND AUTHORITIES IN OPPOSITION TO DEFENDANTS' MOTION TO DISMISS FIRST AMENDED COMPLAINT - 16 -

1 that "[a]nyone who violates any of the exclusive rights of the copyright owner . . . is an infringer 2 of the copyright . . ." Section 501(b) provides the aggrieved copyright owner may commence a 3 copyright infringement lawsuit against such copyright infringer. 4
In enacting the CRCA, Congress amended Section 501(a) of the Copyright Act to

5 expressly provide that the term "anyone" in Section 501(a) includes any state and any 6 instrumentality of the state, to the same extent as any nongovernmental entity. Likewise, in 7 enacting the CRCA, Congress added Section 511 to the Copyright Act. To the extent that there 8 may have been any doubt whether Congress' amendment of Section 501(a) abrogated state 9 immunity, Section 511(a) expressly provides that the states and the instrumentalities of the state 10 "shall not be immune, under the Eleventh Amendment of the Constitution of the United States or 11 under any other doctrine of sovereign immunity" from a copyright infringement lawsuit in federal 12 court. 13
Given the foregoing, the key inquiry in the analysis of the constitutionality of the CRCA is

14 whether Congress acted pursuant to a constitutional grant of power authorizing it to enact the 15 CRCA. As discussed below, Congress most certainly did so. 16 17 18
4. The CRCA is a Constitutional Exercise of Congress' Au thority Pursuant to the Enforcement Clause of the Fourteenth Amendment As SDSU correctly explains in its moving papers, the Supreme Court held in Seminole

19 Tribe of Florida v. Florida, 517 U.S. 44 (1995) that Congress does not have the power pursuant to 20 Article I of the Constitution to abrogate state immunity. But such argument completely misses the 21 point, because the CRCA survives constitutional scrutiny as a valid exercise of Congress' power 22 under the Enforcement Clause of the Fourteenth Amendment, U.S. CONST. amend. XIV, § 5. 23
It has long been settled that Congress has the power under the Enforcement Clause to

24 abrogate state immunity. [See, e.g. City of Boerne v. Flores, 521 U.S. 507, 519-20 (1997) 25 (Congress has "wide latitude" under Enforcement Clause to enact appropriate legislation to protect 26 Fourteenth Amendment rights); Katzenbach v. Morgan, 384 U.S. 641, 651 (1966) (Enforcement 27 Clause authorizes Congress to "exercise its discretion in determining whether and what legislation
needed to secure the g uarantees of the Fourteenth Amendment").] 28 is____________________________________________________________________________________________
PLAINTIFF'S MEMORANDUM OF POINTS AND AUTHORITIES IN OPPOSITION TO DEFENDANTS' MOTION TO DISMISS FIRST AMENDED COMPLAINT - 17 -

1

Among the guarantees of the Fourteenth Amendment are that no State shall deprive any of

2 its citizens of life, liberty or property without due process of law. The exclusive rights created by 3 and protected under the Copyright Act are "property" rights. [ See American Tobacco Co. v. 4 Werckmeister, 207 U.S. 284, 291 (1907); Roth v. Pritikin, 710 F.2d 934, 939 (2d Cir. 1983); New
th 6 5 Kids on the Block v. News America Publishing, Inc., 971 F.2d 302, 306 (9 Cir. 1992). ]

6 Consequently, Congress was empowered under the Enforcement Clause to enact the CRCA to 7 protect copyright owners against the taking of their property, i.e., copyright infringement, by the 8 States. 9
The Supreme Court decision in City of Boerne v. Flores , 521 U.S. 507 (1997) is the critical

10 case to the Court's analysis of whether the CRCA was a valid exercise of Congressional power 11 under the Enforcement Clause. As the court explained in Boerne, Congress' power under the 12 Enforcement Clause is "remedial" in nature, and Congress does not have the power under the 13 Enforcement Clause to create new rights. [521 U.S. at 519.] But the court also recognized that 14 "the line between measures that remedy . . . and measures that make a substantive change in the 15 governing law i s not easy to discern [so] Congress must be given wide latitude [under the 16 Enforcement Clause]." [Id. at 519-20 (emphasis added).] 17
The Boerne decision sets forth the analytical framework that federal courts must employ to

18 determine if a statute is sustain able under the Enforcement Clause. As the Supreme Court 19 explained in Boerne, "there must be a congruence and proportionality between the injury to be 20 prevented or remedied and the means adopted to that end. " [Id.] To apply this somewhat 21 amorphous princi ple, the Supreme Court explained that for Congress to invoke the Enforcement 22 Clause, it must identify conduct transgressing the Fourteenth Amendment's protections, and must 23 tailor its legislative scheme to remedying or preventing such conduct. [Id.] 24 26 27 28
6

Th e Enforcement Clause analysis required under Boerne focuses on three particular issues:

25 (1) the nature of the injury to be remedied; (2) whether there are adequate state remedies to
Defendants do not dispute in their moving papers that a copyright is "property" for purposes of the Fourteenth Amendment analysis.
____________________________________________________________________________________________ PLAINTIFF'S MEMORANDUM OF POINTS AND AUTHORITIES IN OPPOSITION TO DEFENDANTS' MOTION TO DISMISS FIRST AMENDED COMPLAINT - 18 -

1 address the injury; and (3) the coverage of the legislation. [See Kimel v. Florida Board of 2 Regents, 528 U.S. 62 (2000). ] As discussed below, the CRCA passes muster under all three of 3 these factors so the CRCA was a valid exercise of Congress' power under the Enforcement 4 Clause. 5 6 7
a. The CRCA was enacted in response to substantial evidence of copyright infringement by the States and their instrumentalities As the Court might expect, Congress held substantial hearings regarding the need for and

8 scope of the CRCA before its passage. The evidence presented to Congress during such hearings 9 unfortunately showed a widespread and growing trend of copyright infringement by the States and 10 their instrumentalities (like colleges and universities). For example, one witness testified that 11 problems "are clearly widespread and they are clearly increasing." [Senate Hearings at pp. 106, 12 109.] A number of witnesses testified about the problems they had enforcing their copyrights 13 against state universities. [Senate Hearings at pp. 82, 90 -91 (addressing illegal copying of 14 copyrighted materials by universities and losses caused thereby); p. 109 (discussing devices 15 created by universities to override copy protections on computer products); House Hearings at p. 16 146 (discussing curious situation where universities typically do not buy multiple copies of 17 computer software as required by copyright law); Senate Hearing at p. 82; House Hearings at pp. 18 104, 106, 148 (discussing illegal university photocopying of copyrighted course books); Senate 19 Hearing at pp. 95, 102.).] 20
Witnesses also testified that cop yright infringement problems by the states only increased

21 as the well -publicized budget problems of various states became more severe. [See House 22 Hearings at p. 92.] Congress also heard how state agencies increasingly were refusing to license 23 copyrighted works like software and performance works because of the States' perceived Eleventh 24 Amendment immunity. [See Senate Hearing at pp. 69-70, 77; p. 152; pp. 95, 102.] Even state 25 university representatives themselves admitted that the widespread evidence of state copyright 26 infringement and invalid assertions of Eleventh Amendment immunity as such circumstances 27 existed at the time of the hearings about the CRCA could justify abrogation. [See Senate Hearing
p. 131; House Hearings at p 179.] 28 at____________________________________________________________________________________________
PLAINTIFF'S MEMORANDUM OF POINTS AND AUTHORITIES IN OPPOSITION TO DEFENDANTS' MOTION TO DISMISS FIRST AMENDED COMPLAINT - 19 -

1

In connection with its consideration of and deliberations about the CRCA, Congress also

2 commissioned the Copyright Office to obtain information and comments about Eleventh 3 Amendment immunity issues in the copyright field. The Copyright Office in turn issued a request 4 for information to the copyright community to discuss state immunity and the problems that might 5 be caused thereby. Excerpts of some of the comments and information submitted to the Copyright 6 Office in response to its request are submitted herewith as Exhibit C. Such comments and 7 information provide additional insightful and highly probative evidence of the need for the 8 abrogation of state immunity for copyright claims that ultimately was brought about by the 9 enactment of the CRCA. 10
Simply put, Congress had more than ample evidence of widespread and increasing

11 copyright infringement and improper assertions of Eleventh Amendment immunity by the states 12 that Congress believed needed to be remedied by the enactment of the CRCA. Congress 13 accordingly more than amply satisfied the first Boerne factor in enacting the CRCA. 14 15 16
b. Congress determined there were no available state remedies for copyright infringement Congress also carefully considered the availability of state remedies for copyright

17 infringement as part of its deliberations about the CRCA. Congress concluded that there was not a 18 single state that had any remedy for copyright infringement. This is no surprising giving the fact 19 that the federal courts have exclusive jurisdiction over copyright infringement lawsuits pursuant to 20 28 U.S.C. 1338(a). [See Senate Hearing at pp. 7, 66; House Hearings at p. 79.] Moreover, as 21 previously discussed, following the Supreme Court's decision in Atascadero Hospital, there was 22 an explosion of copyright litigation whereby st ates had infringed copyrights but attempted to avoid 23 liability on the basis of alleged Eleventh Amendment immunity. 24
As can be seen, at the time it enacted the CRCA, Congress was faced with a situation

25 where there was no remedy available whatsoever to copyright owners whose copyrights had been 26 infringed by states or their instrumentalities. Congress consequently reasonably exercised its 27 power under the Enforcement Clause to abrogate state immunity in order to create a remedy 28 against states who deprive their citizens of their property without due process by engaging in ____________________________________________________________________________________________
PLAINTIFF'S MEMORANDUM OF POINTS AND AUTHORITIES IN OPPOSITION TO DEFENDANTS' MOTION TO DISMISS FIRST AMENDED COMPLAINT - 20 -

1 copyright infringement. 2 3 4
c. Congress tailored the remedy to be provided by the CRCA to the magnitude of the harm to be prevented In enacting the CRCA, Congress did nothing more than extend the remedies already

5 available under the Copyright Act against private and non-governmental parties to the states and 6 their instrumentalities. In enacting the CRCA, Congress did not create any type of new or 7 enhanced right against the states or rights against the states that were different or greater than the 8 rights against private parties. Moreover, because of the nature of copyright infringement, i.e., the 9 unlawful use of copyrighted materials, Congress did not create any remedy that was esoteric or 10 difficult to understand. 11
In summary, Congress, in the exercise of the discretion and wide latitude granted to it to

12 enforce the protections of the Fourteenth Amendment, found that making damages remedies 13 available against the States was necessary to remedy state copyright infringement. [See H. Rep. 14 No. 101-282(I) at pp. 8-9.] Such exercise of its discretion was amply and fully supported by fact 15 and the evidence adduced by Congress during its hearings on the CRCA, and is eminently 16 constitutional. 17 18 19
5. The Supreme C ourt Decision in Florida Prepaid Does Not Require a Finding that the CRCA is Unconstitutional In Florida Prepaid Postsecondary Educational Expense Bd. v. College Savings Bank, 527

20 U.S. 627 (1999), the Supreme Court found that an amendment to the Patent and Plant Variety Act 21 called the "Patent Remedy Act" that was enacted by Congress to abrogate state immunity under 22 such statute was not a valid exercise of Congress' authority under the Fourteenth Amendment. 23 Such decision does not mandate that the Court likewise invalidate the CRCA and grant SDSU's 24 motion to dismiss. 25
This is so because, as discussed in detail above, in passing the CRCA Congress did

26 everything that the Florida Prepaid court found lacking when it invalidated the Patent Remedy 27 Act. As discussed herein, unlike the situation with the Patent Remedy Act, Congress identified a
idespread and increasing pattern of state copyright infringement. Congress considered the 28 w____________________________________________________________________________________________
PLAINTIFF'S MEMORANDUM OF POINTS AND AUTHORITIES IN OPPOSITION TO DEFENDANTS' MOTION TO DISMISS FIRST AMENDED COMPLAINT - 21 -

1 availability of recourse under state law (which, as discussed was totally non-ex istent), and it 2 tailored the CRCA to remedy the specific problem of state copyright infringement it identified. 3
Simply put, in enacting the CRCA, Congress acted at least as prudently and carefully ­ if

4 not more prudently and carefully ­ as it has in the past in enacting legislation ultimately found by 5 the Supreme Court to be valid exercises of Congress' power under the Enforcement Clause. [ See, 6 e.g. , Fitzpatrick v. Bitzer, 427 U.S. 445 (1976); Katzenbach v. Morgan, 384 U.S. 641 (1966).] 7 Thus, the decision in Florida Prepaid does not provide any basis or reason for this Court to
7 8 invalidate the CRCA.

9 10

B.

Rauch Is Not Entitled To Any Relief By This Motion

Rauch's motion to dismiss is made pursuant to FRCP 12(b)(6). Because this is a FRCP

11 12(b) motion, the Court must accept as true all material allegations in MIMI's Complaint, as well
th 12 as all reasonable inferences therefrom. [Pareto v. FDIC, 139 F.3d 696, 699 (9 Cir. 1998).] The

13 Complaint must be construed in the light most favorable to MIMI, and dismissal may not be 14 granted unless it appears "beyond doubt" that MIMI can prove no set of facts in support of its
th 15 claims. [ See Parks School of Business, Inc. v. Symington , 51 F.3d 1480, 1484 (9 Cir. 1995).]

16

Defendant Rauch seeks dismissal of the claims against him on two grounds: (1) that he

17 allegedly also enjoys immunity from suit under the Eleventh Amendment because he supposedly 18 was an employee of SDSU; and (2) MIMI's state law claims against Rauch supposedly are 19 preempted by the Copyright Act. As discussed below, neither of Rauch's arguments has any 20 merit. Even if SDSU is immune under the Eleventh Amendment, such immunity does not extend 21 to acts of copyright infringement done by Rauch individually. Moreover, because MIMI's state 22 law claims seek to vindica te rights that are not within the scope of the Copyright Act, such claims 23 are not preempted. Rauch's motion for dismissal accordingly should be denied in its entirety. 24 25
7

26 CRCA was different that the Patent Remedy Act at issue in Florida Prepaid because of the
evidence adduced by Congress during its deliberations about the CRCA, and consequently Prepaid, 527 U.S at 659 n.9 (Stevens, J., dissenting).]

Indeed, in his dissent in Florida Prepaid, Justice Stevens specifically commented that the

27 concluded that the CRCA was appropriate legislation under the Enforcement Clause. [ See Florida 28
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1 2 3

1.

The Declarations Submitted By Rauch Cannot Be Considered In Connection With This Motion And Should Be Stricken From The Record

An important aspect of practice under FRCP 12(b)(6) is that a court cannot rely upon

4 extrinsic evidence (other than matters subject to judicial notice and matters of public record) in 5 considering a FRCP 12(b)(6) motion. [See 5B Wright & Miller, Federal Practice and Procedure , 6 at section 1337.] In direct violation of this fundamental rule of FRCP 12(b)(6) practice, Rauch has 7 submitted two declarations in support of this motion, in what appears to be a blatant and improper 8 attempt to circumvent the allegations of MIMI's Complaint and convert this motion into a thinly 9 disguised motion for summary adjudication . 10
Such tactic cannot and should not be countenanced. Because the declarations filed by

11 Rauch constitute extri nsic evidence that attempts to contradict the allegations of MIMI's 12 Complaint, such declarations cannot be considered by the Court in connection with this motion 13 and should be stricken from the record. 14 15
2. Rauch Does Not Enjoy Any Immunity Here MIMI has sued Rauch both in his individual capacity (making this lawsuit a so-called

16 "personal capacity suit") as well as in his potential role as a SDSU employee. [Complaint ¶ 21.] 17 Because this is a 12(b)(6) motion, MIMI's allegations must be accepted as true and Rauch cannot 18 introduce extrinsic evidence in support of the motion. In other words, MIMI's allegations that 19 Rauch acted in his individual capacity in infringing, and aiding and abetting and inducing the 20 infringement of, MIMI's copyright must be accepted as true. 21
E ven if SDSU enjoys sovereign immunity which precludes this suit against it (which it

22 does not) , such immunity does not shield Rauch from personal liability for committing copyright 23 infringement himself or for inducing and aiding and abetting SDSU to commit copyright
8 24 infringement.

25 26 27 28
8

Personal capacity lawsuits like the present one against Rauch "seek to impose personal

For the reasons discussed herein, SDSU is not immune from this suit. Rauch consequently likewise enjoys no immunity for acts taken in his official capacity (if any) for the same reasons.
____________________________________________________________________________________________ PLAINTIFF'S MEMORANDUM OF POINTS AND AUTHORITIES IN OPPOSITION TO DEFENDANTS' MOTION TO DISMISS FIRST AMENDED COMPLAINT - 23 -

1 liability upon a governmental official for actions he takes under color of state law." [Kentucky v. 2 Graham, 473 U.S. 159, 165 (19 85).] Such suits do not violate the Eleventh Amendment. [Id.] 3 Simply put, the possible award of monetary damages for copyright infringement against Rauch ­ 4 which there is no reason to assume he could not pay ­ does not implicate any Eleventh 5 Amendment concerns that may apply to the claims against SDSU. [Richard Anderson
th 6 Photography v. Brown, 852 F.2d 114 (4 Cir. 1988).]

7

The Fourth Circuit decision in Richard Anderson Photography is squarely on point in

8 demonstrating that Rauch does not enjoy any Eleventh Amendment immunity regardless of 9 whether SDSU has such immunity (which it does not). 10
In Richard Anderson Photography , the plaintiff sued Radford University, an educational

11 instrumentality of the Commonwealth of Virginia, and Deborah Brown, Radford's director of 12 public information and relations, for copyright infringement for making unauthorized use of the 13 plaintiff's copyrighted photographs. Given that the lawsuit was filed before passage of the CRCA, 14 the court found that Radford was entitled to immunity from such suit. 15
The claims against Brown were against her in her official capacity as well as in her

16 individual capacity. The court found that Brown was not entitled to any immunity for acts of 17 copyright infringement taken in her individual capacity, e ven if such copyright infringement was 18 done in the course and scope of Brown's employment. [See 852 F.2d at 122.] In so holding, the 19 Fourth Circuit explained, in language squarely on point here, that "the mere fact that [Brown's] 20 conduct was undertaken i n the course of her state employment does not of course relieve her of 21 individual liability, even if her employer could not be sued for it [because of immunity]. A state 22 may no more than an individual principal give its agent authority to commit torts without civil 23 recourse . . . Brown is therefore amenable to suit in her individual capacity for the claimed 24 copyright violation." [Id. (emphasis added).] 25
Just as was true in Richard Anderson Photography, Rauch cannot claim and is not entitled

26 to any immunity for acts of copyright infringement taken in his individual capacity, even if such 27 acts of copyright infringement were done in the course of Rauch's employment by SDSU.
IMI's Complaint specifically and expressly alleges claims against Rauch against Rauch in his 28 M____________________________________________________________________________________________
PLAINTIFF'S MEMORANDUM OF POINTS AND AUTHORITIES IN OPPOSITION TO DEFENDANTS' MOTION TO DISMISS FIRST AMENDED COMPLAINT - 24 -

1 individual capacity. [Complaint ¶ 21.] Consequently, just as was done in Richard Anderson 2 Photography, this Court should reject any claim of immunity by Rauch. 3 4
2. MIMI's State Law Claims Against Rauch Are Not Preempted . The preemption argument made by Rauch is based on a fundamental misinterpretation of

9 5 the nature and basis of MIMI's state law claims. Preemption exists only as state law claims based

6 upon rights that are the equivalent to the exclusive copyright rights protected under the Copyright 7 Act. [17 U.S.C. § 301(a).] Section 301(a) preempts a state law claim only when (1) the particular 8 materials or work addressed by the state law claim fall within the type of works protected by the 9 Copyright Act under Sections 102 and 103 of the Copyright Act (the so -called "subject matter" 10 requirement); and (2) the state law claim seeks to vindicate legal or equitable rights that are 11 equivalent to rights already protected by copyright law under Section 106 of the Copyright Act 12 (the so -called "general scope" requirement). [See, e.g., Briarpatch Ltd. V. Phoenix Pictures, Inc., 13 373 F.3d 296, 305 (2d Cir. 2004).] The foregoing test is known as the "extra element" test ­ a 14 state law claim will not be preempted if it deals with subject matter not within the scope of the 15 Copyright Act or if it otherwise includes any "extra elements" that make it qualitatively different 16 from a copyright claim. [ See id .] 17
Here, MIMI's state law claims against Rauch are based on the misappropriation and

18 conversion by Rauch of things such as MIMI's methodologies for evaluating the economic impact 19 of sporting events, questionnaires developed by MIMI to evaluate the impact of the Holiday Bowl, 20 work papers generated by MIMI when it did economic impact studies for the Holiday Bowl, and 21 other intangible property and ideas. [Complaint ¶¶ 58-60, 64-68, 74-79.] 22 24
So, reduced to their essence, MIMI's allegations are that Rauch stole two separate and

23 distinct types of property from MIMI. First, Rauch pirated and misappropriated MIMI's
9

25 indicated in its opposition to the earlier motion to dismiss, MIMI agrees that the state law claims 26 prejudice. MIMI believes it already effected the dismissal of its state law claims against SDSU 28
law claims. against SDSU (but only against SDSU) can be dismissed, so long as such dismissal is without when it filed the first amended complaint. But if such dismissal is not clear, MIMI will agree to

It appears that SDSU also is seeking dismissal of MIMI's state law claims. However, as MIMI

27 file a further amended complaint to better clarify t hat SDSU is not a named defendant on the state
____________________________________________________________________________________________ PLAINTIFF'S MEMORANDUM OF POINTS AND AUTHORITIES IN OPPOSITION TO DEFENDANTS' MOTION TO DISMISS FIRST AMENDED COMPLAINT - 25 -

1 copyrighted 2003 Report to create the infringing 2004 economic impact study. Such wrongful 2 conduct clearly falls within the exclusive jurisdiction of the Copyright Act and Is not addressed by 3 MIMI's state law claims. 4
But as alleged in MIMI's Complaint, Rauch also stole and misappropriated MIMI's

5 methodologies for evaluating the economic impact of sporting events, questionnaires developed 6 by MIMI to evaluate the impact of the Holiday Bowl, work papers generated by MIMI when it did 7 economic impact studies for the Holiday Bowl, and other intangible property and ideas. None of 8 this property is the subject of copyright protection. Indeed, unlike the situation in the Berge case 9 cited in SDSU's motion, the property stolen and misappropriated by Rauch that is not covered by 10 copyright is not simply the "ideas" embodied in the copyrighted work, but actually property that is 11 separate and distinct from the copyrighted content in the 2003 Report. 12
Simply put, because the property that is the subject of MIMI's state law clai ms against

13 Rauch is not property that is the "equivalent" of rights protected under the Copyright Act, there is 14 no preemption. 15
It also must be remembered that Rauch is raising his preemption defense in the context

16 of a FRCP 12(b)(6) motion. Obviously, the identity and nature of the property that is the subject 17 of MIMI's state law claims will be the subject of substantial discovery and proof by evidence. At 18 this stage of this case, the Court must accept as true MIMI's characterization of the property that is 19 addressed by MIMI's state law claims. If, after discovery, Rauch still believes preemption exists, 20 he can bring a summary judgment motion. But for now, accepting the allegations of MIMI's 21 Complaint as true and drawing all favorable inferences from such allegations in favor of MIMI as 22 the Court must in the context of a FRCP 12(b)(6) motion, Rauch's preemption argument must be 23 rejected. 24 25 26 27 28
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1

In the event the Court believes that MIMI's Compliant does not show clearly enough why

2 the state law claims ar e not preempted, MIMI requests leave to file an amended complaint to 3 provide more detailed allegations about the nature of the property addressed by the state law 4 claims, and more detailed allegations showing why there is no preemption. 5 6 7 DATED: January 4, 2007 8 9 10 11 12 13 14 16 17 18 19 20 21 22 23 24 25 26 27 28
____________________________________________________________________________________________ PLAINTIFF'S MEMORANDUM OF POINTS AND AUTHORITIES IN OPPOSITION TO DEFENDANTS' MOTION TO DISMISS FIRST AMENDED COMPLAINT - 27 -

THE AFFINITY LAW GROUP APC

By:

/s/ Gregory P. Goonan Gregory P. Goonan Attorneys for Plaintiff Marketing Information Masters, Inc.

Certificate of Service

The undersigned hereby certifies that on this 4th day of January 2007, a true and accurate copy of the attached do