Reiner v. Saginaw Valley State University et al
Filing
50
OPINION AND ORDER granting 40 Motion for Judgment on the pleadings. Signed by District Judge Paul D. Borman. (DTof)
UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF MICHIGAN
SOUTHERN DIVISION
TC REINER,
Case No. 16-11728
Plaintiff,
Paul D. Borman
United States District Judge
v.
THOMAS CANALE,
Defendant.
______________________________/
Patricia T. Morris
United States Magistrate Judge
OPINION AND ORDER GRANTING DEFENDANT’S MOTION FOR
JUDGMENT ON THE PLEADINGS
Plaintiff TC Reiner first brought this copyright suit, alleging both
infringement and wrongful removal of copyright information, against Saginaw
Valley State University (“SVSU”), the Saginaw Valley State University Board of
Control (“SVSU Board”), a former SVSU student, and an initially unnamed SVSU
professor. The first three of those defendants have since been dismissed, and the
professor has since been identified as Defendant Thomas Canale (“Defendant”).
Now before the Court is Defendant Canale’s Motion for Judgment on the
Pleadings. Defendant advances two potential grounds for dismissal of this action:
(1) untimeliness, because he was not named as a defendant until after the limitations
period had expired, and the amended pleading adding him as a party does not relate
back to the date of the earlier complaint; and (2) immunity, on the assertion that
Defendant has qualified immunity in his individual capacity, and Eleventh
Amendment immunity in his official capacity. Both arguments have merit, and the
Court will therefore grant Defendant’s Motion for Judgment on the Pleadings.
BACKGROUND
Factual Allegations
Plaintiff is a professional fashion and fine-art photographer. (ECF No. 32, 2d
Am. Compl. ¶ 3.) He is the creator of the work at issue in this lawsuit (the “Work”):
a photograph of a seated woman entitled Nikki. (2d Am. Compl. ¶ 11; Ex. 1,
Photograph entitled “Nikki”.) He also owns a copyright in the Work, which was
registered in 2004. (2d Am. Compl. ¶ 12-13; Ex. 2, Copyright Catalog Entry.)
Defendant is a Professor of Art at SVSU, and held that position during all
times relevant to this lawsuit. (2d Am. Compl. ¶ 4; ECF No. 39, Answer ¶ 4.)
On or around April 28, 2014, Plaintiff learned that the Work had been
included in materials distributed by SVSU to its students. (Am. Compl. ¶ 15.)
Plaintiff alleges that Defendant copied and distributed the Work to his students, and
alleges on information and belief that at least one student used the Work in designing
an advertisement for a domestic violence shelter as part of a class assignment.1 (2d
Am. Compl. ¶¶ 5, 16; Ex. 3, Advertisement.) Plaintiff further alleges that Defendant
encourages students to use works created in class or for class assignments as a way
1
That student was originally named as a defendant, as were SVSU and the SVSU
Board. (ECF No. 16, Am. Compl.) Plaintiff subsequently agreed to dismiss these
three defendants (see ECF Nos. 29, 34), leaving only Defendant Canale in the action.
2
of promoting themselves to potential employers, and that at least the one student (but
possibly others) included the work along among materials provided to potential
employers. (2d Am. Compl. ¶¶ 6, 18.)
Defendant did not have or obtain a license or permission to use the Work. (2d
Am. Compl. ¶ 20.) At no point were students advised to seek permission from
Plaintiff to use the Work, and the Work as provided to students did not contain
copyright information. (2d Am. Compl. ¶¶ 19, 26.) While SVSU maintains policies
regarding the use of copyrighted material, Plaintiff alleges, those policies do not
require strict adherence, nor do they require instructors to educate their students on
either the copyright policies themselves or on applicable copyright laws and
regulations. (2d Am. Compl. ¶ 21; Ex. 4, Copyright Policy.)
In a letter dated August 18, 2015, Plaintiff (through an attorney) notified
SVSU that its use of the Work violated federal copyright law, and demanded that
SVSU cease and desist from further use of the Work. SVSU denied violating any
copyright law. (Am. Compl. ¶¶ 22-23.)
Plaintiff alleges that “[b]y failing to obtain a license for the Work or other
works2 by [Plaintiff] and allowing students access to and use of [such works], both
inside and outside of the school setting, Defendant has profited from the name,
2
The Second Amended Complaint does not specifically allege infringement of any
copyrights besides that of the Work, nor does it identify any other work by Plaintiff
that Defendant allegedly made unauthorized use of.
3
reputation and signature image of [Plaintiff].” (2d Am. Compl. ¶ 27.) Plaintiff
alleges that he “has sustained and will continue to sustain substantial injury, loss and
damage to his ownership rights in The Work.” (2d Am. Compl. ¶ 28.)
Relevant Procedural History
Plaintiff first filed suit on May 16, 2016 against SVSU and the SVSU Board
of Control (“SVSU Board”) only. (ECF No. 1, Compl.) The original Complaint
asserted two claims for copyright infringement under the Copyright Act, 17 U.S.C.
§§ 106 and 501. (Id. ¶¶ 27-42.)
The following November, Magistrate Judge Patricia T. Morris granted
Plaintiff leave to amend his complaint, and Plaintiff added two defendants to the
action: the student whom Plaintiff alleges used the Work in a class assignment, and
the professor who taught the class. (ECF No. 16, Am. Compl.) In the Amended
Complaint, the professor—now identified as Defendant Canale—was referred to as
“Jane Doe.” (Am. Compl. at 2, Pg ID 193.)
A few days after Plaintiff filed his Amended Complaint, SVSU and SVSU
Board moved to dismiss the Amended Complaint (to the extent that it asserted claims
against SVSU and the SVSU Board) on Eleventh Amendment grounds. The parties
fully briefed that motion.3 (ECF Nos. 17, 19, 20.) At the May 19, 2017 hearing on
3
After the parties had briefed the motion but before a hearing was held, the Court
certified to the United States Attorney General that the constitutionality of a federal
statute—the Copyright Remedy Clarification Act (“CRCA”), 17 U.S.C. § 511(a)—
4
the Motion, however, the parties agreed on the record that SVSU and SVSU Board
should be dismissed as Defendants, and the Court entered an Order dismissing
SVSU and SVSU Board from the action the same day. (ECF No. 29.)
On July 7, 2017, Plaintiff filed his Second Amended Complaint, which is pled
against Defendant Canale only, and which is now the operative complaint in this
case. (ECF No. 32, 2d Am. Compl.) The Second Amended Complaint asserts two
claims: one claim of copyright infringement under the Copyright Act, 17 U.S.C. §§
106 and 501 (Count I); and one claim of wrongful removal of copyright information
under the Digital Millennium Copyright Act, 17 U.S.C. § 1202 (Count II). (2d Am.
Compl. ¶¶ 29-44.) Four days later, Plaintiff stipulated to dismiss the student
defendant, leaving Canale as the sole defendant in the action. (ECF No. 34.)
On September 15, 2017, Defendant filed the instant Motion for Judgment on
the Pleadings. (ECF No. 40, Pl.’s Mot.) Plaintiff did not file a timely response, and
sought the Court’s leave on October 27 to file a late response. (ECF No. 43.) The
Court granted Plaintiff leave to file a late response (ECF No. 47), which Plaintiff did
on November 7 (ECF No. 48, Pl.’s Resp.). Defendant filed a Reply the following
day. (ECF No. 49, Def.’s Reply.)
The Court conducted a hearing on Defendant’s Motion for Judgment on the
had been drawn into question, as required by 28 U.S.C. § 2403(a) and Federal Rule
of Civil Procedure 5.1(b). (ECF No. 24.) The United States declined to intervene in
this matter. (ECF No. 27.)
5
Pleadings on Wednesday, November 22, 2017, and now issues the following ruling.
STANDARD OF REVIEW
“Motions for judgment on the pleadings pursuant to Federal Rule of Civil
Procedure 12(c) are analyzed under the same de novo standard as motions to dismiss
pursuant to Rule 12(b)(6).” Sensations, Inc. v. City of Grand Rapids, 526 F.3d 291,
295 (6th Cir. 2008) (citing Penny/Ohlmann/Nieman, Inc. v. Miami Valley Pension
Corp., 399 F.3d 692, 697 (6th Cir. 2005)). “[T]he legal standards for
adjudicating Rule 12(b)(6) and Rule 12(c) motions are the same . . . .” Lindsay v.
Yates, 498 F.3d 434, 437 n.5 (6th Cir. 2007).
Thus, Rule 12(c), like Rule 12(b)(6), allows for the dismissal of a case where
the complaint fails to state a claim upon which relief can be granted. When reviewing
a motion to dismiss under Rule 12(b)(6), a court must “construe the complaint in the
light most favorable to the plaintiff, accept its allegations as true, and draw all
reasonable inferences in favor of the plaintiff.” Handy-Clay v. City of Memphis, 695
F.3d 531, 538 (6th Cir. 2012).
To state a claim, a complaint must provide a “short and plain statement of the
claim showing that the pleader is entitled to relief.” Fed. R. Civ. P. 8(a)(2). “[T]he
complaint ‘does not need detailed factual allegations’ but should identify ‘more than
labels and conclusions.’” Casias v. Wal–Mart Stores, Inc., 695 F.3d 428, 435 (6th
Cir. 2012) (quoting Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 555 (2007)). The
6
court “need not accept as true a legal conclusion couched as a factual allegation, or
an unwarranted factual inference.” Handy-Clay, 695 F.3d at 539 (internal citations
and quotation marks omitted).
In other words, a plaintiff must provide more than “formulaic recitation of the
elements of a cause of action” and his or her “[f]actual allegations must be enough
to raise a right to relief above the speculative level.” Twombly, 550 U.S. at 555-56.
To survive a Rule 12(c) motion for judgment on the pleadings or a Rule 12(b)(6)
motion to dismiss for failure to state a claim, “a litigant must allege enough facts to
make it plausible that the defendant bears legal liability. The facts cannot make it
merely possible that the defendant is liable; they must make it plausible.” Agema v.
City of Allegan, 826 F.3d 326, 331 (6th Cir. 2016) (citing Ashcroft v. Iqbal, 556 U.S.
662, 678 (2009)).
“If, on a motion under Rule 12(b)(6) or 12(c), matters outside the pleadings
are presented to and not excluded by the court, the motion must be treated as one for
summary judgment under Rule 56.” Fed. R. Civ. P. 12(d); see also Rondigo, L.L.C.
v. Twp. of Richmond, 641 F.3d 673, 680 (6th Cir. 2011) (“Assessment of the facial
sufficiency of the complaint must ordinarily be undertaken without resort to matters
outside the pleadings.”). Courts have carved out a narrow exception to this rule,
however: a district court ruling on a Rule 12(b)(6) motion “may consider the
Complaint and any exhibits attached thereto, public records, items appearing in the
7
record of the case and exhibits attached to defendant's motion to dismiss so long as
they are referred to in the Complaint and are central to the claims contained therein.”
Bassett v. Nat'l Collegiate Athletic Ass'n, 528 F.3d 426, 430 (6th Cir. 2008) (quoting
Amini v. Oberlin Coll., 259 F.3d 493, 502 (6th Cir. 2001)).
DISCUSSION
Defendant advances two lines of argument in his Motion for Judgment on the
Pleadings. First, he argues that Plaintiff’s claims are time-barred, since amended
pleadings naming previously unnamed defendants (commonly known as “Doe
defendants”) do not relate back to the date of the original pleading under Federal
Rule of Civil Procedure 15(c), and Defendant Canale was not named as a party to
this action until after the applicable three-year limitations period expired. Second,
Defendant argues in the alternative that he is entitled to qualified immunity insofar
as he is being sued in his individual capacity, and Eleventh Amendment immunity
insofar as he is being sued as a state employee.4
As discussed in detail below, Plaintiff’s claims are indeed time-barred under
the governing statute of limitations. Even if they were not, Defendant would be
entitled to both forms of immunity that he invokes. Accordingly, the Court will grant
Defendant’s Motion for Judgment on the Pleadings.
4
Defendant also contends that Plaintiff has not pled a continuing violation of law as
is required to justify injunctive relief, but Plaintiff clarifies in his Response that he
is “no longer pursuing his claim for injunctive relief.” (Pl.’s Resp. at Pg ID 703.)
8
Plaintiff’s claims are time-barred.
As a threshold matter, Defendant argues that this action is barred by the threeyear limitations period that applies to both of Plaintiff’s claims.
Both claims arise under Title 17 of the United States Code: his copyright
infringement claim is asserted under 17 U.S.C. §§ 106 and 501, and his wrongful
removal of copyright information claim is asserted under 17 U.S.C. § 1202. Civil
actions that arise under Title 17, which governs copyrights generally, are subject to
a three-year statute of limitations. See 17 U.S.C. § 507(b) (providing that “[n]o civil
action shall be maintained under the provisions of this title unless it is commenced
within three years after the claim accrued”). “A copyright-infringement claim
accrues when a plaintiff knows of the potential violation or is chargeable with such
knowledge.” Gomba Music Inc. v. Avant, 225 F. Supp. 3d 627, 640 (E.D. Mich.
2016) (internal quotation marks omitted) (quoting Roger Miller Music, Inc. v.
Sony/ATV Publ'g, LLC, 477 F.3d 383, 390 (6th Cir. 2007)).
It was in the Second Amended Complaint that Plaintiff named Canale as the
defendant who had been previously identified as “Jane Doe” in the initial pleadings.
The Second Amended Complaint was filed on July 7, 2017—more than three years
after Plaintiff alleges he became aware of the alleged copyright violations on April
28, 2014. (See 2d Am. Compl. ¶ 15.) There is no apparent dispute that for this reason,
the Second Amended Complaint must relate back to the date of an earlier pleading
9
that was filed within 17 U.S.C. § 507(b)’s limitations period for the claims against
Defendant Canale to be timely. And although there is some conflicting case law in
the Sixth Circuit on this issue, the clear weight of authority compels the conclusion
that the Second Amended Complaint does not relate back in this way.
Amendment of pleadings in federal civil actions is governed by Federal Rule
of Civil Procedure 15. Rule 15(c)(1) provides for three ways in which an amended
pleading may relate back:
An amendment to a pleading relates back to the date of the original
pleading when:
(A) the law that provides the applicable statute of limitations allows
relation back;
(B) the amendment asserts a claim or defense that arose out of the
conduct, transaction, or occurrence set out--or attempted to be set
out--in the original pleading; or
(C) the amendment changes the party or the naming of the party
against whom a claim is asserted, if Rule 15(c)(1)(B) is satisfied and
if, within the period provided by Rule 4(m) for serving the summons
and complaint,5 the party to be brought in by amendment:
(i) received such notice of the action that it will not be prejudiced
in defending on the merits; and
(ii) knew or should have known that the action would have been
brought against it, but for a mistake concerning the proper party's
identity.
5
Federal Rule of Civil Procedure 4(m) relevantly provides that “[i]f a defendant is
not served within 90 days after the complaint is filed, the court--on motion or on its
own after notice to the plaintiff--must dismiss the action without prejudice against
that defendant or order that service be made within a specified time.”
10
Fed. R. Civ. P. 15(c)(1).
The statute of limitations in this case, see 17 U.S.C. § 507(b), has no relationback provision, so Rule 15(c)(1)(A) is of no help to Plaintiff. Additionally, Sixth
Circuit precedent is clear that “Rule 15(c)(1)(B) allows relation back of an
amendment asserting a ‘claim or defense,’ but it does not authorize the relation back
of an amendment adding a new party.” Asher v. Unarco Material Handling, Inc.,
596 F.3d 313, 318 (6th Cir. 2010) (emphasis in original) (internal quotation marks
omitted) (quoting In re Kent Holland Die Casting & Plating, Inc., 928 F.2d 1448,
1449 (6th Cir. 1991)). The Court finds (and the parties agree) that the only relevant
subprovision here is Rule 15(c)(1)(C), which governs amendments that “change[]
the party or the naming of the party against whom a claim is asserted.”
Rule 15(c)(1)(C) has one prerequisite: it only applies if “Rule 15(c)(1)(B) is
satisfied.” Thus, an amendment changing a party or a party’s name will only relate
back under Rule 15(c)(1)(C) if the allegations in the amended pleading arise from
the same “conduct, transaction, or occurrence set out--or attempted to be set out--in
the original pleading.” Fed. R. Civ. P. 15(c)(1)(B). This requirement is met here
because the claims in the Second Amended Complaint are based on the same factual
allegations as were set forth in the earlier versions of the complaint. See Norfolk Cty.
Ret. Sys. v. Cmty. Health Sys., Inc., 877 F.3d 687, 694 (6th Cir. 2017) (“As
interpreted by our court, [Rule 15(c)(1)(B)’s] standard is met if the original and
11
amended complaints allege the same ‘general conduct’ and ‘general wrong.’”)
(quoting Durand v. Hanover Ins. Grp., Inc., 806 F.3d 367, 374 (6th Cir. 2015)).
To survive judgment on the pleadings on the basis of Rule 15(c)(1)(C), then,
Plaintiff must overcome two obstacles imposed by that Rule. He must satisfy the
“notice” prong of Rule 15(c)(1)(C)(i) by showing that Defendant received notice
within 90 days of the filing of the original complaint, such that Defendant will not
be prejudiced in defending the action. He must also satisfy the “mistaken identity”
prong in Rule 15(c)(1)(C)(ii) by showing that Defendant “knew or should have
known that the action would have been brought against [him], but for a mistake
concerning the proper party's identity.” As described below, there is a split within
the Sixth Circuit regarding the mistaken identity prong, but the weight of authority
strongly favors the proposition that the naming of Doe defendants in a complaint is
not a “mistake concerning the proper party’s identity” under Rule 15(c)(1)(C)(ii).
The split is based on two Sixth Circuit cases decided a decade apart. Berndt
v. State of Tennessee, 796 F.2d 879 (6th Cir. 1986), involved a pro se civil rights
action seeking damages for injuries incurred by the plaintiff while in the custody of
a state mental health institution. In Berndt, the Sixth Circuit upheld the district
court’s determination that the two named defendants in the action—the institution
and the state of Tennessee itself—were immune from suit on Eleventh Amendment
grounds. See id. at 881-82. At the same time, the court found that the complaint also
12
alleged illegal conduct by the institution’s employees without identifying them by
name. Noting that the Eleventh Amendment did not bar the action against those
employees in their individual capacities, and highlighting the plaintiff’s pro se status
as well as the gravity of the allegations, the court remanded the case to the district
court to allow the plaintiff to amend his complaint by naming the staff members as
defendants. See id. at 882-83. The Sixth Circuit acknowledged that any such
amendments would likely be outside of the statute of limitations, and set forth
guidance for the district court’s determination on whether an amendment would
relate back under Rule 15(c).6 See id. at 883-84. The court explained that
constructive rather than actual notice to the new defendants would be sufficient to
satisfy the notice prong of Rule 15(c), and that the new defendants’ status as officials
of the original defendants could itself be enough to impute notice to them; as to the
mistaken identity prong, the court merely stated that it was “a patently factual inquiry
. . . left to the district court.” Id. The court then closed by cautioning that while these
principles “are appropriate considerations for the district court, they are only
guides.” Id. at 884. In short, the Berndt court did not analyze the mistaken identity
6
The earlier version of Rule 15(c) analyzed by the Berndt court was essentially
identical to the version that is in effect today. The only substantial difference is that
under the old Rule 15(c), the new party must have had notice of the action within
the limitations period that governed the action, rather than within the 90-day period
set forth in Federal Rule of Civil Procedure 4(m), as Rule 15(c) now requires. See
Berndt, 796 F.2d at 883.
13
prong of Rule 15(c)(1)(C)(ii), but it did make clear that naming Doe defendants after
the expiration of the applicable limitations period could satisfy it.
Ten years later, in Cox v. Treadway, 75 F.3d 230 (6th Cir. 1996), the Sixth
Circuit ruled on an excessive-force action brought under 42 U.S.C. § 1983, in which
the plaintiff had included four “unnamed police officers” among the defendants in
his original complaint, and subsequently named them after the statute of limitations
had run. See id. at 239-40. The court concluded that the amended complaint did not
relate back, explaining that
[t]he naming of “unknown police officers” in the original complaint
does not save the pleading. Substituting a named defendant for a “John
Doe” defendant is considered a change in parties, not a mere
substitution of parties. Therefore, the requirements of Fed.R.Civ.P.
15(c) must be met in order for the amendment adding the named
defendant to relate back to the filing of the original complaint.
Cox, 75 F.3d at 240. The requirements of Rule 15(c) were not met in the case at bar,
the court then reasoned, because “Sixth Circuit precedent clearly holds that new
parties may not be added after the statute of limitations has run, and that such
amendments do not satisfy the ‘mistaken identity’ requirement of [Rule 15(c)].” Id.
(citing In re Kent Holland Die Casting & Plating, Inc., 928 F.2d 1448, 1449–50 (6th
Cir. 1991) and Marlowe v. Fisher Body, 489 F.2d 1057, 1064 (6th Cir. 1973)).
Finally, the Cox court held that the plaintiffs “cannot benefit from the ‘imputed
knowledge’ doctrine of [Berndt] because the City of Louisville was never named as
14
a defendant in this case. In Berndt, knowledge was imputed to the newly added
defendants because they were officials of the originally named defendant, the State
of Tennessee.” Cox, 75 F.3d at 240.
Thus in Berndt, on the one hand, the Sixth Circuit allowed for the possibility
that an amendment naming Doe defendants after the limitations period expires can
relate back under Rule 15(c). Then, on the other hand, the Sixth Circuit later held in
Cox “that amendments outside the limitations period must meet the requirements of
[Rule] 15(c), [and] also held that the ‘mistaken identity’ requirement of the Rule
cannot be met where a named party is substituted for an unknown, as opposed to a
mistaken, party.” Daily v. Monte, 26 F. Supp. 2d 984, 986 (E.D. Mich. 1998). Several
district courts over the years have characterized Berndt and Cox as creating a “split
in authority regarding the proper interpretation of the Rule.” Daily, 26 F. Supp. 2d
at 986; see also Clark v. Oakland Cty., No. 08-14824, 2010 WL 2891712, at *8 (E.D.
Mich. July 22, 2010) (“This arguable split within the Sixth Circuit is representative
of the varying outcomes other circuits have arrived at on the issue of ‘John Doe’
defendants and Rule 15(c).”); Marksbury v. Elder, No. 5:09-CV-24-REW, 2011 WL
1832883, at *7 n.10 (E.D. Ky. May 12, 2011) (noting that “[s]everal courts have
suggested a possible Sixth Circuit split regarding Cox and Rule 15(c)” while
characterizing the relevant language in Berndt as dicta).
Daily, one of the district court decisions that recognized the split, concluded
15
two years after Cox was decided that Cox “represent[ed] a departure from previous
interpretations of Rule 15(c),” and declined to follow it, allowing an amendment
naming Doe defendants to relate back. See Daily, 26 F. Supp. 2d at 985-88. But
importantly, the Sixth Circuit has consistently cited Cox in unpublished cases since
the very year Cox was decided to hold that naming previously unnamed defendants
does not satisfy the mistaken identity prong of Rule 15(c)(1)(C)(ii) because a lack
of knowledge as to the identity of a defendant does not constitute a “mistake” within
the meaning of the Rule. See, e.g., Wiggins v. Kimberly-Clark Corp., 641 F. App'x
545, 549 (6th Cir. 2016) (holding that even if the plaintiff had established that the
Doe defendants “‘knew or should have known’ that he would bring the claims
against them, he failed to establish that his lack of knowledge of their identities was
due to a ‘mistake’ as the Rule requires”); Brown v. Cuyahoga Cty., Ohio, 517 F.
App'x 431, 433–34 (6th Cir. 2013) (explaining that the Sixth Circuit “previously
held [in Cox] that an absence of knowledge is not a mistake, as required by Rule
15(c)(1)(C)(ii),” and further noting that “[t]he Supreme Court recently elucidated
the meaning of the word ‘mistake’ as used in Rule 15, giving the term its plain
meaning: ‘[a]n error, misconception, or misunderstanding; an erroneous belief’”)
(alteration in original) (quoting Krupski v. Costa Crociere S.p.A., 560 U.S. 538, 548
(2010)); Smith v. City of Akron, 476 F. App'x 67, 69 (6th Cir. 2012) (“The Rule
allows relation back for the mistaken identification of defendants, not for defendants
16
to be named later through ‘John Doe,’ ‘Unknown Defendants’ or other missing
appellations. Our approach is consistent with the holdings of every other circuit on
this issue.”) (collecting cases); Moore v. Tennessee, 267 F. App'x 450, 455 (6th Cir.
2008) (“[A] plaintiff's lack of knowledge pertaining to an intended defendant's
identity does not constitute a ‘mistake concerning the party's identity’ within the
meaning of Rule 15(c). Nor are we alone in so holding—our court's precedent
comports with no fewer than seven of our sister circuits.”) (citation omitted)
(collecting cases); Force v. City of Memphis, 101 F.3d 702, at *3 (6th Cir. 1996)
(table) (“We have recently held that [the mistaken identity prong] is not satisfied
where the caption of an original complaint refers to ‘unknown police officers’ and,
after the expiration of the applicable limitations period, an amended complaint
specifically names those officers.”) (citing Cox, 75 F.3d at 240).
Courts in this District have relied on these unpublished Sixth Circuit decisions
to reach the same outcome. See, e.g., Finnerty v. Wireless Retail, Inc., 624 F. Supp.
2d 642, 654–55 (E.D. Mich. 2009) (“In this court, a plaintiff's lack of knowledge
pertaining to an intended defendant's identity does not constitute a “mistake
concerning the party's identity” within the meaning of Rule 15(c).”) (internal
quotation marks omitted) (quoting Moore, 267 F. App’x at 455); Robinson v.
Genesee Cty. Sheriff's Dep't, No. 16-CV-13805, 2017 WL 1105060, at *5 (E.D.
Mich. Mar. 24, 2017) (citing Cox and Moore for the proposition that “amendments
17
identifying previously unknown police officers do not satisfy the ‘mistaken identity’
requirement of [Rule 15(c)]”). Both of these district court decisions relied in part on
the unpublished Sixth Circuit case Moore v. Tennessee, 267 F. App'x 450 (6th Cir.
2008). Moore was discussed in detail in a 2010 opinion, issued by a coordinate court
in this District, which articulated a line of reasoning that this Court considers to be
especially relevant to this case. See generally Clark v. Oakland Cty., No. 08-14824,
2010 WL 2891712 (E.D. Mich. July 22, 2010). In Clark, the court acknowledged
the Berndt/Cox conflict, but ultimately determined that Moore strongly supported
the conclusion that naming Doe defendants does not satisfy Rule 15(c)’s mistaken
identity prong. In this regard, the court recognized that
Moore, as an unpublished opinion of the Sixth Circuit, is not necessarily
binding on this Court. Moore is, however, highly persuasive authority
for how the Sixth Circuit would so rule if the issue of “John Doe”
defendants and Rule 15(c) relation back were to be reconsidered. At the
very least, the Moore panel deemed Cox still deserving of precedential
credence. Given Moore’s reaffirmation of the continuing viability of
Cox’s central holding, this Court defers to the sound judgment of the
Sixth Circuit in deciding Moore.
Clark, 2010 WL 2891712, at *9.
The court’s reasoning in Clark is even more pertinent today, since the Sixth
Circuit has rendered three more unpublished decisions in the years since Clark that
support the same proposition: Wiggins, Brown, and Smith (all cited supra). Berndt,
by contrast, has not had the same viability as Cox, and the Sixth Circuit has not cited
18
it in a case that squarely addresses this issue since Moore was decided in 2008.7 In
the final analysis, the weight of authority clearly favors the proposition, embodied
in Cox, Moore, and Clark, that asserting claims against Doe defendants in an initial
complaint will not later be found to be a “mistake concerning the proper party’s
identity” under Rule 15(c)(1)(C)(ii).
In arguing that his addition of Defendant Canale should in fact relate back
under Rule 15(c), Plaintiff relies chiefly on Berndt, but for the reasons set forth
above, Berndt’s precedential value is undermined by Cox and the various cases that
have followed it. Plaintiff also cites two other Sixth Circuit cases for the general
proposition that “a plaintiff may sue an unnamed ‘John Doe’ defendant as a
placeholder until the plaintiff learns the identity of the ‘John Doe’ Defendant” (Pl.’s
Resp. at 3, Pg ID 707), but both cases are unavailing to him. In Brown v. Owens
7
In fact, this Court is aware of only one (unpublished) Sixth Circuit decision in the
last 20 years that seems to directly adopt Berndt’s interpretation of Rule 15(c) by
reversing a district court’s denial of a plaintiff’s attempt to amend a complaint
outside the statute of limitations, based on the possibility that the plaintiff’s naming
a Doe defendant in the original complaint may have constituted a “mistake
concerning the proper party’s identity.” See Friedmann v. Campbell, 202 F.3d 268
(6th Cir. 1999) (unpublished) (reversing the district court’s denial of a pro se
plaintiff’s request to amend his complaint to specifically name a Doe defendant
because the limitations period had run, and directing the district court to consider on
remand whether the new defendant had constructive notice under Berndt without
analyzing the issue of mistaken identity). Insofar as Friedmann falls on the Berndt
side of the intra-circuit conflict, it is strongly outweighed by the numerous and more
recent Sixth Circuit and district court decisions discussed above, all of which have
cited Cox for the proposition that the naming of Doe defendants is not a “mistake
concerning the proper party’s identity” under Fed. R. Civ. P. 15(c)(1)(C)(ii).
19
Corning Inv. Review Comm., 622 F.3d 564 (6th Cir. 2010), the court only mentioned
a plaintiff’s ability to file suit against “John Doe defendants” in order to establish
that a plaintiff need not have actual knowledge of the specific identity of all
defendants in an action for the statute of limitations to start running. See id. at 57273. In Hall v. City of Detroit, 2016 U.S. App. LEXIS 21175 (CA 6, 2016), the Sixth
Circuit upheld the district court’s dismissal of a pro se civil rights action to the extent
that it was asserted against a municipal defendant, but reversed the district court’s
dismissal as to three unnamed police officer defendants. The court in Hall noted that
the plaintiff’s claims may have been time-barred—and also pointed out that while
the plaintiff was entitled to bring suit against Doe defendants, he could not do so in
order to circumvent a statute of limitations—but ultimately declined to rule on
whether the lawsuit was timely in first instance because the district court had not
itself addressed the issue. (Pl.’s Resp. Ex. 3, Hall v. City of Detroit at 2-3, Pg ID
729-30.) Neither of these two cases touches the issue of whether a plaintiff’s use of
a Doe defendant in a complaint is a “mistake concerning the proper party’s identity”
under Rule 15(c), so neither is relevant here.
Lastly, the parties argue fairly extensively in their briefs over when exactly
Plaintiff became aware that Defendant Canale was the proper defendant in this
action. Plaintiff maintains that it was not until “June or July of this year.” (Pl.’s Resp.
at 3, Pg ID 698.) Defendant counters that Plaintiff had notice of the fact as early as
20
June 2014, and attaches as an exhibit to his Reply an email exchange between a
representative of Plaintiff’s and the former student defendant, in which the former
student defendant identified “Tom Canel” as the instructor of the design class in
which she allegedly made use of the Work. (See Def.’s Reply at 2-3, Pg ID 743-44;
Ex. A, June 2014 Emails.)
This issue is outside the scope of the instant Motion for three distinct reasons.
First and most importantly, the email exchange attached as an exhibit to Defendant’s
Reply is extrinsic to the pleadings, and for that reason this Court cannot consider it
without converting the instant Motion for Judgment on the Pleadings to a summary
judgment motion. See Fed. R. Civ. P. 12(d) (“If, on a motion under Rule 12(b)(6) or
12(c), matters outside the pleadings are presented to and not excluded by the court,
the motion must be treated as one for summary judgment under Rule 56. All parties
must be given a reasonable opportunity to present all the material that is pertinent to
the motion.”). Conversion of the instant Motion under Rule 12(d) is unnecessary
because, for the reasons that follow, the precise time at which Plaintiff learned of
Defendant’s identity is not ultimately a relevant issue. The Court excludes this
evidence accordingly.
Second, the binding precedent and ample persuasive authority discussed
supra establishes that regardless of when Plaintiff learned of Defendant Canale’s
existence, his claims are barred because Defendant Canale was added as a defendant
21
after the statute of limitations had run, and Plaintiff’s earlier use of a Doe defendant
does not constitute “a mistake concerning the proper party’s identity” as required for
the amendment to relate back under Rule 15(c).
Finally, the Supreme Court has held that as a general rule, “relation back under
Rule 15(c)(1)(C) depends on what the party to be added knew or should have known,
not on the amending party's knowledge or its timeliness in seeking to amend the
pleading.” Krupski v. Costa Crociere S.p.A., 560 U.S. 538, 541 (2010) (emphasis
added). Even if Sixth Circuit case law did not foreclose any argument that this matter
involves “a mistake concerning the proper party's identity” under Rule
15(c)(1)(C)(ii), the time at which Plaintiff learned of Defendant’s identity would be
irrelevant for this independent reason.
Although there is arguably conflicting Sixth Circuit case law on the issue of
whether an initial lack of knowledge as to the identity of a defendant constitutes a
“mistake” under Rule 15(c)(1)(c)(ii), the weight of authority clearly favors a finding
that it does not. Therefore, Plaintiff’s addition of Defendant Canale as a defendant
in this action does not relate back to the original pleadings under Rule 15(c), and
both of Plaintiff’s claims in this action are time-barred.
Defendant is immune from suit.
Even if both of Plaintiff’s claims were not untimely, Defendant would be
entitled to judgment on the pleadings on immunity grounds: qualified immunity to
22
the extent that he is sued in his individual capacity, and Eleventh Amendment
immunity to the extent that he is sued in his official capacity.
1.
Defendant is entitled to qualified immunity to the extent that he is
sued in his individual capacity.
a) Background law
“The doctrine of qualified immunity protects government officials ‘from
liability for civil damages insofar as their conduct does not violate clearly established
statutory or constitutional rights of which a reasonable person would have known.’”
Pearson v. Callahan, 555 U.S. 223, 231 (2009) (quoting Harlow v. Fitzgerald, 457
U.S. 800, 818 (1982)). The qualified immunity doctrine requires the court to
determine: (1) “whether the facts that a plaintiff has alleged . . . make out a violation
of a constitutional right” and (2) “whether the right at issue was ‘clearly established’
at the time of [the] defendant's alleged misconduct.” Id. at 232 (citations omitted)
(quoting Saucier v. Katz, 533 U.S. 194, 201 (2001)). Courts may “exercise their
sound
discretion
in
deciding
which
of
the
two
prongs
of
the qualified immunity analysis should be addressed first in light of the
circumstances in the particular case at hand.” Id. at 236.
“For a right to be clearly established, ‘[t]he contours of the right must be
sufficiently clear that a reasonable official would understand that what he is doing
violates that right.’” Clemente v. Vaslo, 679 F.3d 482, 490 (6th Cir. 2012) (quoting
Anderson v. Creighton, 483 U.S. 635, 640 (1987)). The Sixth Circuit has emphasized
23
that “this inquiry must be undertaken in light of the specific context of the case, not
as a broad general proposition. . . . [T]he relevant, dispositive inquiry . . . is whether
it would be clear to a reasonable officer that his conduct was unlawful in the situation
he confronted.” Clemente, 679 F.3d at 490 (internal citations and quotation marks
omitted).
The plaintiff “bear[s] the burden of showing the claimed right was clearly
established.” Everson v. Leis, 556 F.3d 484, 494 (6th Cir. 2009). The plaintiff need
not cite “’a case directly on point’ [to demonstrate] that the law is clearly established,
‘but existing precedent must have placed the statutory or constitutional question
beyond debate.’” Kent v. Oakland Cty., 810 F.3d 384, 395 (6th Cir. 2016) (quoting
Stanton v. Sims, 134 S. Ct. 3, 5 (2013)). The inquiry requires the plaintiff to point to
“controlling authority” or “a robust consensus of cases of persuasive authority” in
order to show that the right was clearly established. Hidden Village, LLC v. City of
Lakewood, Ohio, 734 F.3d 519, 529 (6th Cir. 2013).
b) Threshold issues
Two questions warrant discussion before the merits of Defendant’s qualified
immunity argument can be properly addressed: whether qualified immunity applies
in the copyright context; and if so, whether Defendant, a professor at a public
university, can invoke it as a “government official.” The case law on these questions
compels an affirmative answer to both.
24
Defendant cites three federal district court decisions from other circuits that
have found the doctrine of qualified immunity to be applicable in the copyright
context. (See Def.’s Mot. at 8-9, Pg ID 535-36 (citing Issaenko v Univ of Minnesota,
57 F. Supp. 3d 985, 1012-1016 (D. Minn. 2014); Molinelli-Freytes v Univ of Puerto
Rico, 792 F. Supp. 2d 150, 156-158 (D. P.R. 2011); and Ass'n for Info. Media &
Equip. v. Regents of the Univ. of California, No. 2:10-CV-09378, 2012 WL
7683452, at *5-8 (C.D. Cal. Nov. 20, 2012).) At least one circuit court and three
other district courts—though again, none within the Sixth Circuit—have reached the
same conclusion. See Chavez v. Arte Publico Press, 59 F.3d 539 (5th Cir.
1995), vacated on other grounds sub nom. Univ. of Houston v. Chavez, 517 U.S.
1184 (1996); Lane v. First National Bank of Boston, 687 F. Supp. 11, 16-18 (D.
Mass. 1988); Tresona Multimedia, LLC v. Burbank High Sch. Vocal Music Ass'n,
No. CV 16-4781, 2016 WL 9223889, at *5 (C.D. Cal. Dec. 22, 2016); CampinhaBacote v. Bleidt, 2011 WL 4625394, at *3 (S.D. Tex. Oct. 3, 2011).
Tresona Multimedia is illustrative. In that case, the U.S. District Court for the
Central District of California noted the absence of binding authority on the question
of whether the qualified immunity doctrine applies to copyright law, and observed
that while a handful of federal district courts have determined that it does, “none of
these cases engage in actual analysis on whether qualified immunity should apply to
copyright law, but instead simply note that other courts have done so.” Tresona
25
Multimedia, 2016 WL 9223889, at *5. Acknowledging its own “reservations about
whether the policies underlying qualified immunity are applicable to copyright
infringement,” id. at *5, the court nevertheless determined that the doctrine is
applicable in the copyright context on the basis of two decisions by the U.S. Supreme
Court, which together stand for the principle that “subjecting public officials to an
extra layer of uncertainty—whether a federal court will find that their role in
government or their governmental activities trigger the protections of qualified
immunity in the first place—defeats the very policies that qualified immunity is
intended to promote.” Id. at *5-6 (citing Anderson v. Creighton, 483 U.S. 635 (1987)
and Harlow v. Fitzgerald, 457 U.S. 800 (1982)). The Court finds this reasoning
persuasive, and is unaware of any authority supporting the proposition that the
doctrine of qualified immunity does not apply in the copyright context. For those
reasons, the Court finds that the qualified immunity doctrine may apply in this case.
Plaintiff does not seem to contest that qualified immunity can apply in
copyright actions generally, but he does argue that Defendant himself may not
invoke it. Specifically, Plaintiff argues that unlike members of the SVSU Board
(which was originally named as a defendant in this action but subsequently
dismissed by Plaintiff), Defendant “has no authority over the general operation of
SVSU and does not set university policies or procedures.” (Pl.’s Resp. at 5, Pg ID
709.) Plaintiff does not support this argument with legal citation, and it is without
26
merit at any rate. The qualified immunity doctrine is not limited to high-level
officials or policymakers, but broadly “serves to shield government employees from
liability when performing discretionary functions in the course of their
employment.” Wallin v. Norman, 317 F.3d 558, 561 (6th Cir. 2003) (citing Harlow
v. Fitzgerald, 457 U.S. 800, 816 (1982)); see also Minick v. Metro. Gov't of
Nashville, Davidson Cty., Tenn., 543 F. App'x 507, 509 (6th Cir. 2013) (rejecting an
argument that, “without citing any authority, summarily states that qualified
immunity does not protect [a hospital unit secretary] because she is not a government
official”). Indeed, the Sixth Circuit as well as courts in this District have repeatedly
applied the doctrine to teachers and professors at public educational institutions. See,
e.g., Gohl v. Livonia Pub. Sch. Sch. Dist., 836 F.3d 672, 680–81 (6th Cir. 2016)
(preschool teacher); Saylor v. Bd. of Educ. of Harlan Cty., Ky., 118 F.3d 507, 515–
16 (6th Cir. 1997) (eighth-grade teacher); Reardon v. Midland Cmty. Sch., 814 F.
Supp. 2d 754, 772–74 (E.D. Mich. 2011) (high school teacher); Min Li v. Qi Jiang,
38 F. Supp. 3d 870, 880–81 (N.D. Ohio 2014) (professor and department head).
Plaintiff has not shown that Defendant is barred from asserting qualified immunity
by the nature of his position.
c) Qualified immunity
i.
Copyright Act claim (Count I)
Defendant’s argument for the application of qualified immunity in this matter
27
is grounded in federal copyright law’s “fair use” exception. Defendant has
persuasively shown that the fair use doctrine is unsettled enough—particularly in the
educational context—that his alleged actions did not infringe Plaintiff’s clearly
established statutory rights. Plaintiff cites no case law in response. This Court
concludes that even if this action were not time-barred, it would not survive
Defendant’s Motion for Judgment on the Pleadings because Defendant is entitled to
qualified immunity.
The Copyright Act of 1976 provides that “the fair use of a copyrighted work,
including such use by reproduction in copies . . . for purposes such as criticism,
comment, news reporting, teaching (including multiple copies for classroom use),
scholarship, or research, is not an infringement of copyright.” 17 U.S.C. § 107. The
statute continues:
In determining whether the use made of a work in any particular case
is a fair use the factors to be considered shall include-(1) the purpose and character of the use, including whether such use is
of a commercial nature or is for nonprofit educational purposes;
(2) the nature of the copyrighted work;
(3) the amount and substantiality of the portion used in relation to the
copyrighted work as a whole; and
(4) the effect of the use upon the potential market for or value of the
copyrighted work.
Id.
As noted, the two prongs of the qualified immunity test are (1) “whether the
28
facts that a plaintiff has alleged . . . make out a violation of a constitutional right”
and (2) “whether the right at issue was ‘clearly established’ at the time of defendant's
alleged misconduct.” Pearson, 555 U.S. at 232 (citations omitted). A court has
discretion to decide “which of the two prongs of the qualified immunity analysis
should be addressed first in light of the circumstances in the particular case at
hand.” Id. at 236. Here, the parties focus on the “clearly established” prong. In
determining whether Plaintiff has shown that the right he alleges was infringed was
clearly established, the Court must
look first to the decisions of the Supreme Court, and then to the case
law of this circuit in determining whether the right claimed was clearly
established when the action complained of occurred. [T]he case law
must dictate, that is, truly compel (not just suggest or allow or raise a
question about), the conclusion for every like-situated, reasonable
government agent that what defendant is doing violates federal law in
the circumstances.
Clemente, 679 F.3d at 490 (internal citations and quotation marks omitted).
Defendant correctly asserts that the Supreme Court has yet to address the
contours of “fair use” by professors and students in the educational setting. As to
circuit precedent, Defendant identifies one Sixth Circuit decision and one district
court decision within the Eastern District of Michigan that were on the books as of
April 2014 (when Plaintiff alleges he learned of the alleged violation), and that have
addressed the fair use doctrine in the educational context. Both cases involved
dissemination of allegedly copyrighted materials by a commercial copying service
29
rather than an educator or university employee. See Princeton University Press v.
Michigan Document Servs., Inc., 99 F.3d 1381, 1385-91 (6th Cir. 1996) (holding
that a defendant copy shop’s reproduction of excerpts of copyrighted works was a
commercial use that placed the burden on the defendant to show that its activities
constituted fair use, and that all four statutory factors weighed against a finding that
they did); Blackwell Publ'g, Inc. v. Excel Research Grp., LLC, 661 F. Supp. 2d 786,
792-94 (E.D. Mich. 2009) (finding that an action alleging that a copy service
provider had compiled copyrighted materials from professors, and then allowed
students to copy the materials on its machines for a fee, was “not seriously
distinguishable” from Princeton University Press, and thus that the fair use doctrine
did not apply). Crucially for this case, the Sixth Circuit in Princeton University Press
expressly declined to decide whether the same activities would amount to fair use
had they been undertaken by students or professors. See Princeton University Press,
99 F.3d at 1389 (“As to the proposition that it would be fair use for the students or
professors to make their own copies, the issue is by no means free from doubt. We
need not decide this question, however, for the fact is that the copying complained
of here was performed on a profit-making basis by a commercial enterprise.”).
Plaintiff bears the burden of showing that Defendant’s alleged distribution of
the Work to his students for class purposes infringed Plaintiff’s clearly established
statutory rights. The only case Plaintiff cites in this regard is Princeton University
30
Press, which he cites seemingly in order to concede that “the question of what
constitutes fair use in an educational setting has not been decided in this Circuit.”
(Pl.’s Resp. at 5, Pg ID 709.) Plaintiff’s arguments are otherwise devoid of case
support. He first points out that SVSU had a copyright policy in place, and contends
that Defendant, as “a professor in a field where copyrights are often an issue . . .
would have known that copyrighted works are protected in general, and is assumed
to have been aware of the University’s copyright policy.” (Pl.’s Resp. at 5, Pg ID
709.) Apart from this, Plaintiff argues that Defendant, as someone “working in the
field, would have some idea of what constitutes fair use and what does not. He
certainly knew, from his employer, that the way to avoid a breach of copyright is to
request permission to use the work. There is no dispute that [Defendant] never did
that.” (Pl.’s Resp. at 5-6, Pg ID 709-10.)
There is no merit to these arguments. Beyond failing to cite any authority
suggesting—let alone clearly establishing—that Defendant’s use of the Work was
not fair use, Plaintiff has all but conceded that his rights were not clearly established
for qualified-immunity purposes by acknowledging that neither the Supreme Court
nor the Sixth Circuit has addressed the fair use doctrine in the higher education
context. In fact, 17 U.S.C. § 107 specifically contemplates educational use of
copyrighted work as constituting fair use, and while this does not foreclose the
possibility that activity like Defendant’s may someday be held to be outside the
31
scope of the fair use doctrine, the absence of any Supreme Court or Sixth Circuit
precedent on the issue undercuts Plaintiff’s argument entirely.8
ii.
DMCA claim (Count II)
Defendant has demonstrated that he is entitled to qualified immunity, to the
extent that he is sued in his individual capacity, on the copyright infringement claim
asserted in Count I of the Complaint. The same is true of Plaintiff’s Digital
Millennium Copyright Act (“DMCA”) claim in Count II of the Complaint.
The DMCA relevantly provides that “[n]o person shall, without the authority
of the copyright owner or the law . . . intentionally remove or alter any copyright
management information, knowing, or . . . having reasonable grounds to know, that
it will induce, enable, facilitate, or conceal an infringement of any right under this
title.” 17 U.S.C. § 1202(b). The statutory text of the DMCA makes clear that any
violation of the DMCA is necessarily derivative of an independent infringement of
a right under Title 17 of the United States Code. As Plaintiff has failed to
8
This conclusion is consistent with the only two other district court cases of which
this Court is aware that have addressed qualified-immunity arguments based on the
fair use doctrine. See Tresona Multimedia, 2016 WL 9223889, at *8 (finding, in an
action involving unauthorized performance of copyrighted songs by high school
show choirs, that “since teaching is explicitly listed as fair use, a public school
teacher acting in his teaching capacity would be reasonable in believing” that the
fair use defense applies); Ass'n for Info. Media & Equip., 2012 WL 7683452, at *6
(holding that “a reasonable person would not have known” that uploading
copyrighted video to an internal university network “violated any clearly established
rights pursuant to copyright law because it is ambiguous whether the use was fair
use under copyright law”).
32
demonstrate that any infringement of any right of his was clearly established,
Defendant is entitled to qualified immunity on Plaintiff’s DMCA claim as well.
2. Defendant is entitled to Eleventh Amendment immunity to the extent
that he is sued in his official capacity.
Plaintiff also pleads his claims against Defendant Canale in his official
capacity as an employee of SVSU. In the instant Motion for Judgment on the
Pleadings, Defendant argues that to the extent that he is sued in his official capacity,
he is entitled to sovereign immunity under the Eleventh Amendment to the U.S.
Constitution.9 This Court agrees.
The Supreme Court has held that “absent waiver by the State or valid
congressional override, the Eleventh Amendment bars a damages action against a
State in federal court. . . . This bar remains in effect when State officials are sued for
damages in their official capacity.” Kentucky v. Graham, 473 U.S. 159, 169 (1985);
see also Skinner v. Govorchin, 463 F.3d 518, 524 (6th Cir. 2006) (explaining that
the Eleventh Amendment bars “suits in federal court when the action is ‘in essence
9
In this Opinion and Order, the Court uses the terms “sovereign immunity” and
“Eleventh Amendment immunity” interchangeably. See Union Pac. R. Co. v.
Louisiana Pub. Serv. Comm'n, 662 F.3d 336, 340 (5th Cir. 2011) (“[T]he terms ‘state
sovereign immunity’ and ‘Eleventh Amendment immunity’ are often used
interchangeably to mean the same thing.”); see also Haybarger v. Lawrence Cty.
Adult Prob. & Parole, 551 F.3d 193, 197 (3d Cir. 2008) (recognizing that the Third
Circuit “and other courts of appeals have sometimes used the terms ‘sovereign
immunity’ and ‘Eleventh Amendment immunity’ interchangeably”).
33
one for the recovery of money from the state [and] the state is the real, substantial
party in interest,’ which invariably will be the case when the claimant sues a state
employee in his official capacity”) (quoting Edelman v. Jordan, 415 U.S. 651, 663
(1974); Rodgers v. Banks, 344 F.3d 587, 594 (6th Cir. 2003) (“[T]he Eleventh
Amendment bars § 1983 suits seeking money damages against states and against
state employees sued in their official capacities.”)
“[O]fficial capacity claims are essentially claims against the entity itself.”
Frost v. Hawkins Cty. Bd. of Educ., 851 F.2d 822, 827 (6th Cir. 1988) (citing
Brandon v. Holt, 469 U.S. 464, 471 (1985)). As it is undisputed that Defendant
Canale was an employee of SVSU at all relevant times, any entitlement to Eleventh
Amendment immunity that he has is tied to his employment relationship. For the
reasons discussed below, the Court concludes that SVSU would be entitled to
Eleventh Amendment immunity were it still a defendant in this action, and that that
immunity extends to Defendant Canale as well.
a) Background law
The Eleventh Amendment bars “any suit in law or equity, commenced or
prosecuted against one of the United States by Citizens of another State, or by
Citizens or Subjects of any Foreign State.” U.S. Const. amend. XI. “Although the
Amendment on its face prohibits only suits brought against a state by ‘Citizens of
another State,’ the Supreme Court has long construed the Amendment to protect
34
states from suits filed by their own citizens in federal court on the basis of federal
question jurisdiction.” Reese v. State of Michigan, 234 F.3d 1269, at *3 (6th Cir.
2000) (table) (citing Seminole Tribe of Florida v. Florida, 517 U.S. 44, 54 (1996)
and Edelman v. Jordan, 415 U.S. 651, 663 (1974)).
“Eleventh Amendment immunity attaches only to defendants that are the state
itself or an ‘arm of the State.’” Town of Smyrna, Tenn. v. Mun. Gas Auth. of Georgia,
723 F.3d 640, 650 (6th Cir. 2013) (quoting Ernst v. Rising, 427 F.3d 351, 358 (6th
Cir. 2005)). The Sixth Circuit has consistently held public universities in Michigan
to be arms of the state. See Kreipke v. Wayne State Univ., 807 F.3d 768, 775–76 (6th
Cir. 2015) (Wayne State University); Estate of Ritter by Ritter v. Univ. of Michigan,
851 F.2d 846, 848-51 (6th Cir. 1988) (University of Michigan); Benzie v. W.
Michigan Univ., 19 F. App'x 360, 361 (6th Cir. 2001) (Western Michigan
University); see also McCormick v. Miami Univ., 693 F.3d 654, 661 (6th Cir. 2012)
(noting that “a public university qualifies as an arm of the state”). The only case law
clearly indicating that SVSU specifically is an arm of the state is one unpublished
decision from this District was issued in 2015. See Ross v. Bachand, No. 14-cv14122, 2015 WL 4644912, at *6 (E.D. Mich. Aug. 5, 2015) (“Under Michigan law,
public universities such as SVSU are considered to be arms of the State.”). But in
view of the authorities which clearly establish that public universities in Michigan
are arms of the state, and given that Plaintiff expressly did not dispute that SVSU is
35
an arm of the state in his brief on SVSU and the SVSU Board’s previous motion to
dismiss (see ECF No. 19 at 10, Pg ID 312), the Court finds that SVSU is an arm of
the state for Eleventh Amendment purposes.
SVSU, and Defendant Canale by extension, are thus presumptively immune
from suit unless one of the recognized exceptions to Eleventh Amendment immunity
applies. There are three such exceptions: “First, Congress may abrogate immunity
by statute where its action is a proper exercise of constitutional power . . . . Second,
the [Eleventh] Amendment does not bar a suit against a state official seeking
prospective injunctive relief to end a continuing violation of federal law. Finally, a
state may waive Eleventh Amendment protection.” Carten v. Kent State Univ., 282
F.3d 391, 398 (6th Cir. 2002) (internal citations omitted).
Only the first of these three exceptions is pertinent here. Plaintiff represented
in his Response that he “is no longer pursuing his claim for injunctive relief” (Pl.’s
Resp. at Pg ID 703), which takes the second exception out of play. As to the third
exception, Plaintiff offers no basis for the Court to conclude that Michigan has
waived its Eleventh Amendment immunity as to claims like his, and another court
in this District recently determined in a different copyright suit against a Michigan
public university that it has not. See Wolf v. Oakland Univ., No. 15-13560, 2016 WL
7048812, at *6-7 (E.D. Mich. Dec. 5, 2016) (holding that state employees in
Michigan have broad statutory immunity from tort liability “‘whenever they are
36
engaged in the exercise or discharge of a governmental function,’” and that
Michigan has not waived this immunity via the “specifically enumerated statutory
exceptions to governmental immunity” set forth in Michigan’s Governmental Tort
Liability Act, Mich. Comp. Laws § 691.1407 et seq.) (quoting Beals v. Michigan,
497 Mich. 363, 370 (2015)).
The dispositive issue, then, is whether the first exception applies: that is,
whether Congress has abrogated the states’ Eleventh Amendment immunity as to
the claims pled in this action. This is measured with a two-part test: “first, whether
Congress has ‘unequivocally expresse[d] its intent to abrogate the immunity,’; and
second, whether Congress has acted ‘pursuant to a valid exercise of power[.]’”
Seminole Tribe of Florida v. Florida, 517 U.S. 44, 55 (1996) (quoting Green v.
Mansour, 474 U.S. 64, 68 (1985)). The Supreme Court made clear in Seminole Tribe
that it is only pursuant to the Fourteenth Amendment,10 and no other provision of the
Constitution, that Congress may validly abrogate state sovereign immunity. See
Seminole Tribe, 517 U.S. at 63-66 (holding that a federal statute enacted pursuant to
the Indian Commerce Clause of Article I of the Constitution could not abrogate state
sovereign immunity); see also Florida Prepaid Postsecondary Educ. Expense Bd. v.
10
The specific constitutional provision from which Congress derives this power is
the enforcement clause in Section Five of the Fourteenth Amendment, which
provides that “Congress shall have power to enforce, by appropriate legislation, the
provisions of this article.” U.S. Const. amend. XIV, § 5
37
Coll. Sav. Bank, 527 U.S. 627, 635–36 (1999) (invalidating a federal statute
purporting to abrogate state sovereign immunity for patent infringement claims
because “Seminole Tribe makes clear that Congress may not abrogate state sovereign
immunity pursuant to its Article I powers; hence the [statute] cannot be sustained
under either the Commerce Clause or the Patent Clause”).
In other words, to abrogate the states’ Eleventh Amendment immunity
through legislation, Congress must (1) clearly express its intent to do so, and (2) do
so through legislation that is a valid exercise of its powers under the Fourteenth
Amendment.11 To meet the first prong, “Congress must make its intention to
abrogate state sovereign immunity ‘unmistakably clear in the language of the
statute.’” Hoffman v. Connecticut Dep't of Income Maint., 492 U.S. 96, 101 (1989)
(quoting Atascadero State Hospital v. Scanlon, 473 U.S. 234, 242 (1985)). For a
statute to satisfy the second prong of the test, Congress “must identify conduct
transgressing the Fourteenth Amendment's substantive provisions, and must tailor
its legislative scheme to remedying or preventing such conduct.” Florida Prepaid,
527 U.S. at 639. In this regard, “[t]here must be a congruence and proportionality
between the injury to be prevented or remedied and the means adopted to that end.”
11
The Supreme Court has carved out one narrow exception to this rule in the
bankruptcy context, but it has no relevance here. See Cent. Virginia Cmty. Coll. v.
Katz, 546 U.S. 356, 362-63 (2006) (holding that notwithstanding Seminole Tribe,
the Bankruptcy Clause of Article I of the Constitution represents, since the date of
its enactment, an implied congressional abrogation of state sovereign immunity).
38
Id. (quoting City of Boerne v. Flores, 521 U.S. 507, 519 (1997)).
b) Sovereign immunity
Although Congress has legislatively attempted to abrogate state immunity
from copyright claims, the statute has been invalidated by various courts as an
unconstitutional exercise of federal legislative power. Those decisions are
persuasive, and no court that has addressed the issue has reached the opposite
conclusion. Accordingly, this Court concludes that even if Plaintiff’s claims were
not untimely, they would fail because Defendant has Eleventh Amendment
immunity notwithstanding Congress’ attempt to abrogate that immunity by statute.
i.
Copyright Act claim (Count I)
Count I of the Second Amended Complaint alleges a claim for copyright
infringement in violation of the Copyright Act, 17 U.S.C. §§ 106 and 501. In 1990,
Congress enacted a statute purporting to expressly abrogate state sovereign
immunity from copyright infringement claims: the Copyright Remedy Clarification
Act (“CRCA”), 17 U.S.C. § 511(a). The CRCA provides:
Any State, any instrumentality of a State, and any officer or employee
of a 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 a violation of any of
the exclusive rights of a copyright owner provided by sections 106
through 122, for importing copies of phonorecords in violation of
section 602, or for any other violation under this title.
39
17 U.S.C. § 511(a).
The CRCA’s text permits no doubt that Congress clearly expressed its intent
to abrogate the Eleventh Amendment immunity of states against copyright claims.
The key question becomes whether the CRCA was itself a valid exercise of
congressional power. A substantial number of federal courts have held that it was
not, and invalidated the CRCA on that basis. Among them are the Fifth and Eleventh
Circuits, as well as several district courts (including at least one in this District).
The Fifth Circuit was the first to call the CRCA’s constitutionality into
question. In Chavez v. Arte Publico Press, 204 F.3d 601 (5th Cir. 2000), the Fifth
Circuit interpreted the decision that the Supreme Court had recently issued in
Florida Prepaid as requiring a court to examine three aspects of an express statutory
abrogation of state sovereign immunity: “1) the nature of the injury to be remedied;
2) Congress's consideration of the adequacy of state remedies to redress the injury;
and 3) the coverage of the legislation.” Chavez, 204 F.3d at 605. Applying that
framework to the CRCA in the context of a copyright lawsuit by an author against a
public university, the Fifth Circuit held that the statute’s legislative history did not
demonstrate a pattern of state copyright infringement (as Florida Prepaid had
suggested was required); that Congress gave little thought to state remedies at all;
and that the legislature took no apparent steps to cabin the scope of the statute. See
id. at 605-07. As the Fifth Circuit found no indication in the record that “Congress
40
was responding to the kind of massive constitutional violations that have prompted
proper remedial legislation, that it considered the adequacy of state remedies that
might have provided the required due process of law, or that it sought to limit the
coverage to arguably constitutional violations,” the court struck down the CRCA as
“an improper exercise of Congressional legislative power.” Id. at 607.
Eleven years later, in Nat'l Ass'n of Boards of Pharmacy v. Bd. of Regents of
the Univ. Sys. of Georgia, 633 F.3d 1297 (11th Cir. 2011) (“NABP”), the Eleventh
Circuit reached a similar outcome on slightly different legal grounds. NABP also
involved a copyright action against a university board, and two of the holdings in
that case are relevant here. First, the Eleventh Circuit noted that the “legislative
history of the CRCA makes clear that Congress intended to abrogate state sovereign
immunity under its Article I powers” in passing that law, id. at 1313, and while this
may have been a valid basis for abrogation at the time the CRCA was enacted, the
Supreme Court later established in Seminole Tribe that Article I cannot support a
congressional abrogation of state sovereign immunity. See id. at 1313-15. The court
thus held that the Copyright Clause of Article I,12 which was the stated constitutional
basis for the CRCA when it was enacted, could no longer justify an abrogation of
12
Courts have used both the terms “Patent Clause” and “Copyright Clause” to refer
to Section 8, Clause 8 of Article I, which empowers Congress “[t]o promote the
Progress of Science and useful Arts, by securing for limited Times to Authors and
Inventors the exclusive Right to their respective Writings and Discoveries.”
41
state sovereign immunity. See id. at 1315. Second, the Eleventh Circuit held that the
Fourteenth Amendment could not itself justify the CRCA’s abrogation of state
sovereign immunity. The court explained that Congress can validly abrogate state
sovereign immunity under Fourteenth Amendment in two ways: either by “creat[ing]
private remedies against the States for actual violations” of the Fourteenth
Amendment, or by enacting “prophylactic legislation which deters or remedies
[Fourteenth Amendment] violations ... even if in the process it prohibits conduct
which is not itself unconstitutional, so long as there [is] a congruence and
proportionality between the injury to be prevented or remedied and the means
adopted to that end.” Id. at 1315-16 (emphasis and alterations in original) (internal
quotation marks and citations omitted). The latter (“prophylactic”) option, which
was at issue in Chavez, was not raised in NABP. The question before the court in
NABP was therefore whether the plaintiff—a nonprofit corporation which alleged
that a public university and affiliated parties had appropriated its copyrighted
materials—had alleged an “actual violation” of its Fourteenth Amendment due
process rights. The Eleventh Circuit concluded that it had not. See id. at 1315-19.
Chavez and NABP thus reached similar outcomes on different doctrinal
grounds. The Fifth Circuit’s decision in Chavez had to do with whether there was
enough evidence in the CRCA’s legislative history of a pattern of state-committed
copyright violations to justify the law’s abrogation of state sovereign immunity. In
42
NABP, by contrast, the Eleventh Circuit analyzed whether the plaintiff’s allegation
of copyright infringement was in itself an allegation of a due process violation by
the state, and ultimately concluded that it was not. In other words, Chavez analyzed
the CRCA as a prophylactic remedy for a societal problem, while NABP analyzed
the CRCA as a vehicle for remedying state actions that are themselves violations of
a plaintiff’s constitutional rights. Both courts concluded that it was not a valid
exercise of congressional power. And while these are the only two circuit courts that
have weighed in on the CRCA’s constitutionality thus far, various district courts
have reached the same results, including several within the Sixth Circuit. See, e.g.,
Campinha-Bacote v. Regents of the Univ. of Michigan, No. 1:15-cv-330, 2016 WL
223408, at *3 (S.D. Ohio Jan. 19, 2016) (noting that “numerous courts have held
that the CRCA was passed pursuant to Article I powers and thus was not a valid
abrogation of the states' Eleventh Amendment immunity” and concluding that
“Congress did not validly abrogate the states' Eleventh Amendment sovereign
immunity [in the CRCA] and that the statutorily proscribed conduct, as explained in
[NABP], does not simultaneously and independently violate a constitutional
guarantee protected by the Fourteenth Amendment”) (collecting cases); Coyle v.
Univ. of Kentucky, 2 F. Supp. 3d 1014, 1017–19 (E.D. Ky. 2014) (holding that the
CRCA was passed pursuant to the Copyright Clause of Article I and thus cannot
validly abrogate state Eleventh Amendment immunity); Jacobs v. Memphis
43
Convention & Visitors Bureau, 710 F. Supp. 2d 663, 678–82 (W.D. Tenn. 2010)
(same). A court in this District recently did the same in Wolf, rejecting the plaintiff’s
attempt to distinguish Chavez and declining her “invitation to examine the Copyright
Act ab initio.” Wolf, 2016 WL 7048812, at *5 (E.D. Mich. Dec. 5, 2016).
This Court is not aware of any cases in which a court has upheld the CRCA
against a challenge like those that were made in the cases discussed above.
Moreover, Plaintiff has not presented the Court with contrary legal authority,
evidence of a pattern of state university copyright violations, a colorable argument
that his due process rights were violated, or any other reason not to follow the sound
reasoning in Chavez, NABP, Wolf, and the other cases that have invalidated the
CRCA’s purported abrogation of state sovereign immunity.
ii.
DMCA claim (Count II)
The same analysis applies to Plaintiff’s DMCA claim. The CRCA purports to
abrogate Eleventh Amendment immunity based on violations “of any of the
exclusive rights of a copyright owner provided by [17 U.S.C. §§ 106-122], for
importing copies of phonorecords in violation of [17 U.S.C. § 602], or for any other
violation under this title.” 17 U.S.C. § 511(a). The CRCA thus includes the DMCA,
17 U.S.C. § 1202, within its scope. None of the authorities discussed above that have
invalidated the CRCA have noted any basis for distinguishing between the DMCA
and other provisions of Title 17, so the CRCA cannot validly abrogate Eleventh
44
Amendment immunity from liability under the DMCA.
Plaintiff has cited no other statute that purports to abrogate state sovereign
immunity as to the DMCA, nor does the text of the DMCA itself demonstrate any
congressional intent to that effect. SVSU and thus Defendant Canale are immune
from liability on the DMCA claim under the Eleventh Amendment as well.
CONCLUSION
Because Plaintiff named Defendant Canale as a defendant in this action after
the governing limitations period expired, and since the amended pleading in which
he did so does not relate back to the date of the original pleading under Rule 15(c),
this action is time-barred. Even if it were not, Defendant Canale is entitled to
qualified immunity insofar as he is sued in his individual capacity, and Eleventh
Amendment immunity insofar as he is sued in his official capacity. Accordingly, the
Court hereby GRANTS Defendant’s Motion for Judgment on the Pleadings.
IT IS SO ORDERED.
Dated: March 15, 2018
s/Paul D. Borman
Paul D. Borman
United States District Judge
CERTIFICATE OF SERVICE
The undersigned certifies that a copy of the foregoing order was served upon each
attorney or party of record herein by electronic means or first class U.S. mail on March 15, 2018.
s/D. Tofil
Deborah Tofil, Case Manager
45
Disclaimer: Justia Dockets & Filings provides public litigation records from the federal appellate and district courts. These filings and docket sheets should not be considered findings of fact or liability, nor do they necessarily reflect the view of Justia.
Why Is My Information Online?