IP Law Daily, COPYRIGHT—D. Minn.: Copyright claims against university barred by Eleventh Amendment, (Oct 2, 2014)

By Peter Reap, J.D., LL.M.

Copyright infringement claims brought by terminated molecular biology researcher Olga Issaenko against her former employer, the University of Minnesota, were barred by the Eleventh Amendment because the University was an instrumentality of the state, the federal district court in Minneapolis has decided (Issaenko v. University of Minnesota, September 30, 2014, Tunheim, J.). The court also granted dismissal of the claim with respect to seventeen employees and regents of the University, who were also named as defendants in their official capacities, as well as Issaenko’s former supervisor, Martina Bazzaro in her individual and official capacity.

Further, Issaenko’s request for injunctive relief based on her copyright infringement claim was denied.

Background

In her position as a scientist in Dr. Bazzaro’s laboratory at the University, Issaenko was responsible for employing “molecular biology approaches for studying the role of protein degradation pathways in cancer setting for targeted treatment of ovarian and cervical cancer.”

Between January and April 2010 Issaenko worked on two projects “under the general supervision of Defendant Bazzaro.” The first project related to the survival of ovarian and cervical cancer cells after certain types of treatments. For this project, Issaenko obtained raw data from Dr. Polunovsky, her former supervisor in a different department at the University, and provided the data to Bazzaro. Issaenko suggested to Bazzaro in March 2010 that they perform experiments using a certain type of cell sorting, which Bazzaro declined to do after deciding that such experiments “were not needed.” Issaenko proceeded to perform these experiments and the resulting analysis with the help of Dr. Polunovsky.

With respect to the second “independent” project discussed in the First Amended Complaint, Issaenko alleges that she “provided raw data to Defendant Bazzaro and also worked at home on compilations of tables and graphs, and draft[s] of a joint manuscript,” which Issaenko and Bazzaro planned to submit to the Journal of Medicinal Chemistry (“JMC”) in May 2010. Issaenko alleges that Bazzaro was unaware of the nuances of many of these experiments and Issaenko “worked on statistical analyses for this project at her own home us[ing] her own software because none was provided [by] Defendants” and that “Defendants did not pay for this after hours work.”

Issaenko alleges that, also without Bazzaro’s instruction, she “conceived, designed and performed additional experiments.” Issaenko continued to conduct experiments that Bazzaro determined were unnecessary, and submitted to Bazzaro the figures she made at home as a result of these experiments. Bazzaro denied Issaenko’s request to have this material included in the joint manuscript.

In early 2011 Issaenko sought and was granted copyrights in three different compilations related to the projects described above (“the Copyrighted Works”). Issaenko alleges that in January and February 2011 she performed additional experiments in the laboratory of Dr. Zukowska’s – another University professor – who gave her permission to perform the experiments and publish the results. Issaenko alleges that after she notified the University on January 28, 2011, that she intended to seek copyright protection for her work she was terminated.

Issaenko used her research to generate figures for an article which she drafted in April 2011 and submitted her article to the Journal of Molecular Cancer Therapeutics in the fall of 2011. Issaenko alleges that the journal refused to publish her article because “Defendant Bazzaro made false allegations to the journal that Plaintiff was under a ‘misconduct investigation’ by the University of Minnesota.” Issaenko then published the article in the Cell Cycle journal’s May 1, 2012 issue.

In response to communications form the University after the publication of Issaenko’s article, Cell Cycle published a retraction of Issaenko’s manuscript on May 1, 2013, noting that the University had reviewed the manuscript and determined that the tables and figures in the paper were generated by Issaenko “while working as a staff member in the laboratory of Dr[.] Martina Bazzaro from September 2009 to July 2010 and were used by Dr[.] Issaenko without permission from Dr[.] Bazzaro or the University.”

Issaenko then filed suit, alleging all of the defendants are liable for copyright infringement, violation of Minnesota’s Uniform Deceptive Trade Practice Act, unfair competition, unjust enrichment, defamation, tortious interference with a prospective business advantage, promissory estoppel, violations of the Privileges and Immunities Clause, and violations of the Due Process Clause. Issaenko seeks injunctive relief as well as damages.

Copyright Infringement

Issaenko alleged generally that she “has not authorized Defendants to copy, reproduce, solicit for grants, duplicate, disseminate, distribute, sell, offer for sale, use, or display images that are the same, substantially similar, or confusingly similar to any of Plaintiff’s works of authorship, including her Copyrighted Images and Works,” but that the defendants in fact so used the Copyrighted Works. Issaenko alleged that the defendants infringed her copyrights in the Copyrighted Works “by using, making grant applications, soliciting for grants, seeking patents, distributing, publicly displaying, offering for sale, and/or selling images that were copied, caused to be copied from, or constitute derivative works of Dr. Olga Issaenko’s Copyrighted Images and Works, and which are virtually identical and/or substantially similar to those Copyrighted Images.” The only defendant specifically named in any of these allegations is Bazzaro.

Eleventh Amendment. The defendants argued that the copyright infringement claim must be dismissed against the University and all of the individual defendants and Bazzaro to the extent they are sued in their official capacities because those defendants are immune from suit under the Eleventh Amendment.

The Eleventh Amendment bars suits against state governments brought in federal court unless the state has clearly and unequivocally waived its immunity, or Congress has abrogated the states’ Eleventh Amendment immunity with respect to that particular cause of action. Eleventh Amendment immunity extends to the University of Minnesota because it is an instrumentality of the state, the court noted.

Issaenko did not dispute that the defendants have not clearly and unequivocally waived their Eleventh Amendment immunity. Instead, she disputed whether Congress abrogated the states’ Eleventh Amendment immunity with respect to violations of the Copyright Act. In the Copyright Remedy Clarification Act (“CRCA” or “Copyright Act”), under which Issaenko brought her copyright claims, Congress clearly expressed an intent to abrogate state immunity, the court noted. Therefore, the relevant question for purposes of the defendants’ motion to dismiss was whether that abrogation was made pursuant to a valid exercise of Congress’ power under Section 5 of the Fourteenth Amendment, according to the court.

The Fourteenth Amendment provides, in relevant part, that “[n]o State shall make or enforce any law which shall abridge the privileges or immunities of citizens of the United States; nor shall any State deprive any person of life, liberty, or property, without due process of law.” Section 5 of the Amendment provides that “The Congress shall have power to enforce, by appropriate legislation, the provisions of this article.” Section 5 is a positive grant of legislative power to Congress. But that power is a “remedial” one, which “extends only to enforcing the provisions of the Fourteenth Amendment.” City of Boerne v. Flores, 521 U.S. 507, 519 (1997). The Supreme Court has held that in order to be a valid exercise of Section 5’s enforcement power “[t]here must be a congruence and proportionality between the injury to be prevented or remedied and the means adopted to that end.” Id. at 520.

Neither the United States Supreme Court nor the Eighth Circuit has addressed whether Congress acted pursuant to a valid exercise of its Section 5 power when it abrogated state sovereign immunity under § 511 of the CRCA. But the Fifth Circuit and numerous district courts have concluded that Congress did not act pursuant to a valid exercise of Section 5 power, and therefore state sovereign immunity is not waived under the CRCA, the court observed.

Some courts have concluded that Congress did not validly abrogate sovereign immunity in the CRCA because it explicitly cited only Article I as a basis for its action, and did not rely on its Section 5 power. Most courts have, however, gone on to analyze whether Congress acted pursuant to a valid exercise of its Section 5 power in abrogating state sovereign immunity under the CRCA, and concluded that it did not.

Here, the court found persuasive the reasoning of the Fifth Circuit and the numerous district courts that have concluded that Congress failed to act pursuant to a valid exercise of its enforcement powers under Section 5 when it sought to abrogate state sovereign immunity in the CRCA. Although Issaenko was correct that the legislative history of the CRCA demonstrates that some witnesses testified about copyright infringement in the field of educational publishing specifically, this evidence in the legislative history did not demonstrate the widespread and persistent violations required to justify remedial action by Congress, the court ruled. Accordingly, Issaenko’s citations to the legislative history did not alter the court’s conclusion that Congress failed to support passage of the CRCA with sufficient evidence of widespread and persistent constitutional violations by states.

Finally Issaenko argued that even if Congress was not validly enforcing the Due Process Clause of the Fourteenth Amendment when it sought to abrogate sovereign immunity in the CRCA, the abrogation was valid as an enforcement of the Privileges and Immunities Clause of the Fourteenth Amendment. That argument was rejected.

Issaenko’s argument that Congress’ action in abrogating state immunity under the CRCA was valid as remedial legislation to enforce the Privileges and Immunities Clause did not avoid the problems identified by numerous courts with respect to Congress’ authority under the Due Process Clause, the court determined. In other words, in order to be a valid exercise of its Section 5 power, Congress must still have been able to identify constitutional violations by states – whether they be of the Due Process Clause or the Privileges and Immunities Clause – prior to passing remedial legislation. Furthermore, Congress must craft legislation that is congruent and proportional to those problems.

Because the court already concluded that Congress did not identify a pattern of states infringing copyrights in an unconstitutional manner and did not tailor the remedies in the CRCA to address any constitutional violations by states, the court reasoned that Congress did not act pursuant to a valid exercise of its power to enforce the Privileges and Immunities Clause in passing the CRCA.

Because the CRCA did not validly waive state immunity under the Eleventh Amendment, the court granted the defendants’ motion to dismiss the copyright infringement claims for lack of subject matter jurisdiction with respect to the University. The court also granted the motion with respect to the individual defendants, who were sued only in their official capacities, and Bazzaro in her official capacity, to the extent Issaenko’s copyright claims sought damages.

Injunctive relief. Because injunctive relief against the individual defendants and Bazzaro in their official capacities was not barred by the Eleventh Amendment, the court declined to grant the defendants’ motion to dismiss Issaenko’s copyright claim for lack of subject matter jurisdiction on the basis of sovereign immunity to the extent the claim seeks injunctive relief against the Individual Defendants and Bazzaro in their official capacities.

To establish liability of an individual in an official capacity suit, a plaintiff must show that the official took an action pursuant to an unconstitutional or unlawful governmental policy or custom, or that he or she possessed final authority to establish policies over the subject matter at issue and used that authority in an unconstitutional or unlawful manner. But Issaenko’s complaint contained no allegations about a policy or custom at the University of unlawfully infringing employees’ copyrighted works. Nor did Issaenko’s complaint contain any allegations that the Individual Defendants and/or Bazzaro had final authority to establish University policies regarding copyright and exercised that authority in an unlawful manner.

Accordingly, the court concluded that Issaenko failed to state a plausible claim for relief against the individual defendants and Bazzaro in their official capacities, and granted the defendants’ motion to dismiss the copyright claim against them in their official capacities to the extent that claim seeks prospective injunctive relief.

Qualified immunity for individual capacity claim. Issaenko also brought her copyright claim against Bazzaro in her individual capacity. The defendants argued that this claim must be dismissed because Bazzaro is protected by qualified immunity. The court agreed.

Qualified immunity shields government officials from liability if their conduct does not violate clearly established statutory or constitutional rights of which a reasonable person would have known. To determine whether Bazzaro is entitled to qualified immunity, the court examined (1) whether the facts alleged or shown, construed in the light most favorable to Issaenko, establish a violation of a constitutional right, and (2) whether that constitutional right was clearly established at the time of the alleged misconduct, such that a reasonable official would have known that her actions were unlawful.

The Copyright Act provides that copyright ownership vests initially in the author or authors of the work, the court noted. A work made for hire is further defined, in relevant part, under the Act as “a work prepared by an employee within the scope of his or her employment.” Citing this guidance, numerous courts have adopted the three-part test under the Second Restatement of Agency for determining when a work is made by an employee within the scope of employment. Under this three-part test, in determining whether a work was prepared within the scope of employment, courts consider whether the work is of the kind the employee is employed to perform, occurs substantially within the authorized time and space limits, and is actuated, at least in part, by a purpose to serve the master. When the first element of the test is met “courts have tended not to grant employees authorship rights solely on the basis that the work was done at home on off-hours.

Issaenko’s sole argument that Bazzaro would have been unreasonable in believing that the Copyrighted Works were works for hire was based upon her allegation “that the Copyrighted Images and Works (compilations of tables, graphs, and images) were created on her own time, at her home, using her own resources, her own software, and her own computer.” But these allegations were contradicted by numerous portions of the complaint which refer to Issaenko working on this research at the lab and consulting with Bazzaro about the research, the court observed. Furthermore, the case law is clear that merely conducting work on non-work time, using an employee’s own resources, does not transform the nature of a work for hire creation.

Issaenko’s allegations demonstrated that Bazzaro could reasonably have concluded, based on existing law, that the work Issaenko performed on her own was the type she was employed to perform, the court explained. It was also apparent from the allegations in the First Amended Complaint that a reasonable professor in Bazzaro’s position could have concluded that Issaenko’s research was motivated, at least in part, to serve Bazzaro’s purposes, as it was conducted with respect to research supervised by Bazzaro, Issaenko frequently asked for Bazzaro’s opinions on the work and provided copies of the work to Bazzaro, and some of the work was specifically intended to be part of a joint manuscript which Issaenko and Bazzaro planned to submit to the JMC.

Accordingly, the court granted the defendants’ motion to dismiss the copyright claim on the basis that Bazzaro is entitled to qualified immunity with respect to that claim.

The case is No. 13-3605 (JRT/SER).

Attorneys: Damon L. Ward (Ward Law Group) for Olga Issaenko. Brian J. Slovut, University of Minnesota.

Companies: University of Minnesota

Cases: Copyright MinnesotaNews