We return to our interview with Jonathan Pink>, partner at Lewis Brisbois Bisgaard & Smith. Jonathan Pink represented the defendants in Marketing Information Masters, Inc. v. The Board of Trustees of the California State University System, et. al. (06cv 1682 JAH, SDCA February 5, 2008).

Minow: Your case about the copyright immunity of a state university has attracted a lot of attention (see Slashdot).

Here are a couple of follow up questions. When is a state employee acting in an “official” capacity (and thus enjoying state immunity) versus an “individual” capacity (and thus facing copyright liability)?

Pink: The Supreme Court has said that a state official who violates federal law “is in that case stripped of his official or representative character and is subjected in his person to the consequences of his individual conduct.”  Ex parte Young, 209 U.S. 123, 160 (1908).  Translated, this means that where the actions undertaken by the state official violated the plaintiff’s federally protected rights, the official may be held personally liable in his or her individual capacity. 

In Marketing Information Masters, I intend to establish that the professor never violated the plaintiff’s federally protected rights, and thus cannot be held individually liable for the claims asserted.  The Court has not yet ruled on this issue.  It has only ruled that the University and the professor acting in his “official” capacity are entitled to immunity under the 11th Amendment. 

The fact that the Court left open the question of whether the professor can be held liable in his “individual” capacity, however, highlights what I believe is a logical flaw in applying Ex Parte Young to a case such as this one. It makes no sense to say that a professor acting within the course and scope of his or her employment may be stripped of 11th Amendment protection anytime the underlying claim is established, and that protection exists only where the underlying claim fails.  That would effectively render meaningless the protection afforded a professor in his or her “official” capacity, and would run contrary to established agency law.  I can’t imagine any policy underpinning that would support such a ruling.

Moreover, most of the cases that followed Ex Parte Young are factually distinct from the Marketing case.  Most of those cases involved Civil Rights actions where there is sound public policy in favor of  protecting the public from, say, rogue police officers.  The one case to discuss the Ex Parte Young rule in a copyright context (Richard Anderson Photography v. Brown, 852 F.2d 114 (4th Cir.1988)) provided little-to-no analysis on this issue, and is of little help in navigating these waters. Because of this, I’ll argue that Ex Parte Young and its progeny should not apply here.  I suspect this will be the next big fight in this case. 

Minow: Assuming agency law prevails, is it not best for the university to have a generous policy, if they want to shield their employees?

On the other hand, it seemed the court was influenced by the overall university’s lack of record of infringement… so if a university had an irresponsible (where’s the line between generous and irresponsible?) copyright policy that allowed too much, could that tip the other way?

Pink: Many states, including California, have statutes requiring the state to pay damage awards levied against state officials for acts performed in the course of their official duties. (Calif. Gov. Code Section 825.)

It does appear that the Court considered the absence of any pronounced history of State-sanctioned infringement when ruling that the Copyright Remedy Clarification Act of 1990 was unconstitutional.  While the plaintiff asked the Court to imagine a world where State-operated academic institutions transgressed copyright laws with complete impunity, I think the Court recognized that this was not the reality.  The Court also recognized that Congress apparently had little evidence of such abuse when it decided to enact the CRCA.  

Minow: Do local government and its employees enjoy copyright immunity?

Pink:  By enacting the CRCA, Congress intended to subject States to suit for copyright infringement.  If the CRCA is invalidated, the Eleventh Amendment would again bar a suit for copyright infringement against the States and their officials when acting in their official capacity.  If a local government can be categorized as an instrument of the State, I would suspect that a good argument could be made that it too enjoys the same immunity.  

Minow: Do you know if the case will be appealed?

Pink: The plaintiff has promised to appeal the Court’s invalidation of the CRCA.  From my perspective, this would be a waste of time, money and judicial resources.  While the Supreme Court has never directly ruled on this issue, the Court has already invalidated Congress’ efforts to subject the States to patent and trademark infringement claims based on statutes nearly identical to the CRCA. These are Florida Prepaid v. College Savings Bank, 527 U.S. 627 (1999)and College Savings Bank v. Florida Prepaid Postsecondary Education Expense Fund, 527 U.S. 666 (1999). The Court has also intimated that the CRCA does not pass constitutional muster when remanding Chavez v. Arte Publico Press, 517 U.S. 1184 (1996) for a ruling consistent with the holdings in Florida Prepaid and College Savings Bank.