Israel v. University of Utah et al

MOTION TO DISMISS FOR FAILURE TO STATE A CLAIM and Memorandum in Support

D. UtahNovember 23, 2016

KYLE J. KAISER (13924) Assistant Utah Attorney General SEAN D. REYES (7969) Utah Attorney General 160 East 300 South, Sixth Floor P.O. Box 140856 Salt Lake City, Utah 84114-0856 Telephone: (801) 366-0100 Facsimile: (801) 366-0101 E-mail: kkaiser@utah.gov Attorneys for Defendants IN THE UNITED STATES DISTRICT COURT IN AND FOR THE DISTRICT OF UTAH, CENTRAL DIVISION ESTHER ISRAEL, Plaintiff, v. UNIVERSITY OF UTAH, DONALD STEVEN STRASSBERG, JORDAN ELIZABETH RULLO, JULIA MACKARONIS, KELLY KINNISH and MICHAEL MINER. Defendants. MOTION TO DISMISS UNIVERSITY OF UTAH ON THE BASIS OF ELEVENTH AMENDMENT IMMUNITY AND MEMORANDUM IN SUPPORT Case No. 2:15-cv-00741 Judge Ted Stewart Case 2:15-cv-00741-TS Document 51 Filed 11/23/16 Page 1 of 19 ii TABLE OF CONTENTS TABLE OF AUTHORITIES ......................................................................................................... iii MOTION......................................................................................................................................... ii INTRODUCTION ......................................................................................................................... iii FACTUAL BACKGROUND ........................................................................................................ iv LEGAL STANDARDS ................................................................................................................. vi LEGAL ARGUMENT .................................................................................................................... 1 I. The University Is Entitled to Eleventh Amendment Immunity. .................................1 II. The University Is Entitled to Eleventh Amendment Immunity Against Plaintiffs’ Federal Intellectual Property Claims. ........................................................2 A. There Is No Valid Abrogation of Eleventh Amendment Immunity in the Lanham Act. ................................................................................................... 3 B. There Is No Valid Abrogation of Eleventh Amendment Immunity in the Copyright Act. ................................................................................................ 4 III. The University Is Entitled to Eleventh Amendment Immunity Against Plaintiffs’ State Law Claims. ......................................................................................6 CONCLUSION ............................................................................................................................... 7 CERTIFICATE OF MAILING....................................................................................................... 8 Case 2:15-cv-00741-TS Document 51 Filed 11/23/16 Page 2 of 19 iii TABLE OF AUTHORITIES Cases Ashcroft v. Iqbal, 556 U.S. 662 (2009) ............................................................................................6 Bd. of Trs. of Univ. of Ala. v. Garrett, 531 U.S. 356 (2001)............................................................3 Bell Atl. Corp. v. Twombly, 550 U.S. 544 (2007) ............................................................................6 Cardona Roman v. Univ. of P.R., 799 F. Supp. 2d 120 (D.P.R. 2011)............................................6 Chavez v. Arte Pub. Press, 204 F.3d 601 (5th Cir. 2000) ............................................................4, 5 College Savings Bank v. Fla. Prepaid Postsecondary Educ. Expense Bd., 527 U.S. 666 (1999) .................................................................................................................3, 4 Edelman v. Jordan, 415 U.S. 651 (1974) ........................................................................................2 Ellis v. Univ. of Kan. Med. Ctr., 163 F.3d 1186 (10th Cir. 1998) ...................................................2 Gee v. Pacheco, 627 F.3d 1178 (10th Cir. 2010) ............................................................................6 Hall v. Witteman, 584 F.3d 859 (10th Cir. 2009) ............................................................................6 Hans v. Louisiana, 134 U.S. 1 (1890)..............................................................................................1 Holt v. United States, 46 F.3d 1000 (10th Cir. 1995) ......................................................................6 Johns v. Stewart, 57 F.3d 1544 (10th Cir. 1995) .............................................................................6 Kentucky v. Graham, 473 U.S. 159 (1985) ..................................................................................2, 5 Lambertsen v. Utah Dep't of Corr., 922 F. Supp. 533 (D. Utah 1995) ............................................6 Leverington v. City of Colo. Springs, 643 F.3d 719 (10th Cir. 2011)..............................................6 Muscogee (Creek) Nation v. Pruitt, 669 F.3d 1159 (10th Cir. 2012) ..............................................3 Nat’l Ass’n of Bds. of Pharm. v. Bd. of Regents of Univ. Sys. of Ga., 633 F.3d 1297 (11th Cir. 2011) ...........................................................................................................5 Pennhurst State Sch. & Hosp. v. Halderman, 465 U.S. 89 (1984) ..................................................2 Peterson v. Martinez, 707 F.3d 1197 (10th Cir. 2013) ....................................................................2 Phoenix Software Int’l, Inc., 565 F. Supp. 2d 1007 (W.D. Wisc. 2008) .........................................4 Richins v. Indus. Constru., Inc., 502 F.2d 1051 (10th Cir. 1974) ....................................................6 Case 2:15-cv-00741-TS Document 51 Filed 11/23/16 Page 3 of 19 iv Ruiz v. McDonnell, 299 F.3d 1173 (10th Cir. 2002)........................................................................5 State Contracting & Eng’g Corp. v. Florida, 258 F.3d 1329 (Fed. Cir. 2001) ...............................4 Stuart v. Colo. Interstate Gas Co., 271 F.3d 1221 (10th Cir. 2001) ................................................6 Tellabs, Inc. v. Makor Issues & Rights, Ltd., 551 U.S. 308 (2007) .................................................7 Univ. of Utah v. Shurtleff, 252 F. Supp. 2d 1264 (D. Utah 2003) ...................................................6 Va. Polytechnic Inst. & State Univ. v. Hokie Real Estate, Inc., 813 F. Supp. 2d 745 (W.D. Va. 2001) ..........................................................................................4 Wagoner v. Rural Water Dist. No. 2 v. Grand River Dam Auth., 577 F.3d 1255 (10th Cir. 2009) ....................................................................................................2 Watson v. Univ. of Utah Med. Ctr., 75 F.3d 569 (10th Cir. 1996) ..................................................2 Whipple v. Utah, 2011 WL 4368568 (D. Utah Aug. 25, 2011) .......................................................5 Wilcox v. Career Step, L.L.C., 2010 WL 4968263 (D. Utah Dec. 1, 2010) ....................................5 Yung-Kai Lu v. Univ. of Utah, 2016 WL 4373337 (10th Cir. Aug. 16, 2016) ................................2 Statutes 15 U.S.C. § 1125(a)(2) .....................................................................................................................3 U.S. Const. amend. XI .....................................................................................................................1 Utah Code § 13-11a-1 ......................................................................................................................1 Utah Code § 63G-7-101(3) ..............................................................................................................6 Utah Code § 63G-7-501(1) ..............................................................................................................6 Rules Fed. R. Civ. P. 10(c) ........................................................................................................................7 Federal Rule of Civil Procedure 12(b)(1) ........................................................................................6 Federal Rules of Civil Procedure 12(b)(6).......................................................................................2 Case 2:15-cv-00741-TS Document 51 Filed 11/23/16 Page 4 of 19 v Other Authorities 4 McCarthy on Trademarks and Unfair Competition § 25:66 (4th ed. updated 2015) .............................................................................................................................. 4 Validity, Construction, and Application of Copyright Remedy Clarification Act, Pub. L. No. 101-533, 104 Stat. 2749 (codified at 17 U.S.C.A. §§ 501(a), 511) .......................................5 Case 2:15-cv-00741-TS Document 51 Filed 11/23/16 Page 5 of 19 ii MOTION Defendant University of Utah 1 pursuant to Federal Rules of Civil Procedure 12(b)(1), 12(b)(6), and DUCivR 7–1, moves that the Court dismiss all claims in Plaintiff’s Complaint (doc. 1), as well as any new claims, should the Court allow Ms. Israel to amend her complaint (see docs. 37, 37–1) against the University of Utah. The bases of the Motion are:  The University of Utah is an arm of the State of Utah and thus enjoys immunity from suit in federal court pursuant to the Eleventh Amendment to the United States Constitution;  Eleventh Amendment Immunity bars suit against the University for violations of the Copyright Act and the Lanham Act; and  Eleventh Amendment Immunity bars suit against the University in federal court for violations of Utah state common law or statutory law. For these reasons, more fully described in the accompanying Memorandum of Law, Defendant University of Utah requests that the Court grant the University’s Motion and dismiss it from the case. 2 1 It is unclear from Plaintiff’s Complaint (doc. 1) and her Proposed Amended Complaint (doc. 37-1) if Plaintiff intends to sue the individuals in their official capacity or individual capacity. It appears that Plaintiff sues the individuals in their individual capacity only. (See, e.g., Compl. ¶ 4 (“The individual defendants … through their positions and affiliations with the University of Utah or other defendants, engaged in ….”) To the extent that Plaintiff intends to bring official capacity suits against the individual defendants, any claims for damages against them are barred. Peterson v. Martinez, 707 F.3d 1197, 1205 (10th Cir. 2013) (‘[T]he Eleventh Amendment provides immunity ‘when [s]tate officials are sued for damages in their official capacity.’” (quoting Kentucky v. Graham, 473 U.S. 159, 166, 169 (1985)). 2 This Motion seeks dismissal for reasons in addition to those articulated in Defendants’ Memorandum in Opposition to Plaintiff’s Motion for Leave to Amend (doc. 42). Case 2:15-cv-00741-TS Document 51 Filed 11/23/16 Page 6 of 19 iii INTRODUCTION Plaintiff Esther Israel was a graduate student in the Department of Psychology at the University of Utah. Her adviser was Dr. Donald Strassberg, a professor of clinical psychology at the University. While there, Ms. Israel performed research into human sexuality. Her principal area of study involved presenting test subjects with a variety of pictures and recording, among other things, the time that each subject viewed the pictures. This study became the basis for her thesis for a master’s degree, 3 and was published. 4 Other students in Strassberg’s lab built upon Ms. Israel’s research. Ms. Israel left the University in 2009 (on contentious terms) with the master’s degree. Ms. Israel has sued, among others, the University of Utah, alleging violations of the Copyright Act, the Lanham (Trademark) Act, and state unfair competition law. 5 The University of Utah is entitled to dismissal of these claims based on Eleventh Amendment immunity. It is an arm of the State of Utah, entitled to immunity from suit in federal court. It has not consented or waived its immunity. The University is not an appropriate defendant for Israel’s request for injunctive or declaratory relief. Therefore, the federal claims should be dismissed with prejudice, and the state claims should be dismissed without prejudice as to the University. 3 See, e.g., Ex. 4 to Pl.’s Compl. at 10; Ex. 1 to Pl.’s Compl. 4 Ex. 13 to Pl.’s Compl. 5 Pl.’s Compl. (doc. 1). Ms. Israel has also sought to amend her complaint, adding claims of breach of fiduciary duty, promissory estoppel, and a common law right to publicity. (See doc. 37-1.) Besides being deficient on their merits, and being precluded by the Governmental Immunity Act of Utah, (see Defs.’ Mem. in Opp. to Pl.’s Mot. for Leave to Amend. (doc. 42)), these claims would also be barred by the Eleventh Amendment for the same reason that the statutory unfair competition claim would. Case 2:15-cv-00741-TS Document 51 Filed 11/23/16 Page 7 of 19 iv FACTUAL BACKGROUND 6 1. Ms. Israel was a graduate student in the Department of Psychology at the University of Utah beginning in 2002. 7 Her adviser was Dr. Donald Strassberg, a professor of clinical psychology at the University. 8 2. While enrolled at the University, Ms. Israel performed research into human sexuality. One of her studies involved presenting subjects with a variety of pictures and recording, among other things, the time that each subject viewed the pictures of scantily clad men and women. 9 Ms. Israel wrote some instructions to complete the study, and she wrote computer instructions that allowed the information provided by the subjects to be recorded automatically. 10 3. Ms. Israel, along with Strassberg, reviewed results from the study, and Ms. Israel wrote a paper (“the Work”) based on it. This became her thesis for a master’s degree, 11 which was published as “Viewing Time as an Objective Measure of Sexual Interested in Heterosexual Men and Women,” in the Archives of Sexual Behavior in June 2007. 12 In 2008, Ms. Israel received a copyright registration for the paper under the title “Appeal of Suggestive Materials: A 6 The following facts are taken from Ms. Israel’s Complaint, Proposed Amended Complaint, documents attached or referenced thereto, and sources that may be judicially noticed, and are accepted as true for the purposes of this motion only. 7 Pl.’s Compl. (doc. 1) ¶ 5; see also Propsed Am. Compl., Ex. 15. 8 See, e.g., Pl.’s Compl. ¶ 9 & Ex. 4 at 6–7; 9 See Pl.’s Compl. Ex. 1. 10 See Pl.’s Compl. Ex. 2, 3. 11 See, e.g., Ex. 4 to Pl.’s Compl. at 10; Ex. 1 to Pl.’s Compl. 12 Pl.’s Compl. Ex. 13. Case 2:15-cv-00741-TS Document 51 Filed 11/23/16 Page 8 of 19 v Viewing Time Measure of Sexual Interest.” 13 Ms. Israel listed 2005 as the year of completion of the Work. 14 4. The relationship between Ms. Israel and Strassberg then broke down. Among other things, Ms. Israel alleges that in 2007 one of Strassberg’s other graduate students, Jordan Rullo, took credit for some of Ms. Israel’s work. 15 Ms. Israel also alleges that, in that same year, she was shut out of the lab due to disagreements between Dr. Strassberg and her. 16 5. Ms. Israel left the University in 2009 with her master’s degree.17 6. Ms. Israel alleges that a number of papers, academic “posters,” and other conference presentations infringed on her Work. 18 7. On or about October 16, 2015, Ms. Israel filed her Complaint19 with this Court. The Complaint seeks damages and equitable relief under the Copyright Act, the Lanham (trademark) Act, and Utah state unfair competition law. She asserts that the publication of papers and other academic writings which Ms. Israel believes is an “exact replication” of her Work, 20 and subjects the Defendants to liability for copyright infringement. She has named the University as a Defendant in each of her causes of action. 8. The University of Utah is “an academic institution owned and controlled by the State of Utah.” 21 13 Pl.’s Compl. Ex. 6. 14 Id. 15 See, e.g., Pl.’s Compl. ¶ 22. 16 Id. ¶ 15. 17 Id. ¶ 5 & Ex. 4. 18 Id. ¶¶ 16–21. 19 Pl.’s Compl. (doc. 1). 20 Id. ¶ 33. 21 Id. ¶ 4. Case 2:15-cv-00741-TS Document 51 Filed 11/23/16 Page 9 of 19 vi LEGAL STANDARDS “An assertion of Eleventh Amendment immunity concerns the subject[-]matter jurisdiction of the district court ….” Ruiz v. McDonnell, 299 F.3d 1173, 1180 (10th Cir. 2002). Federal Rule of Civil Procedure 12(b)(1) permits dismissal of cases for “lack of subject-matter jurisdiction.” Motions to dismiss for lack of subject-matter jurisdiction take two forms—“facial” attacks and “factual” attacks. See Stuart v. Colo. Interstate Gas Co., 271 F.3d 1221, 1225 (10th Cir. 2001). In a “facial” attack, the party attacks jurisdiction based on the allegations in the complaint, which the court must accept as true. Id. (citations omitted). In a “factual” attack, the defendant may provide other documents and affidavits, and the court is given “wide discretion” in reviewing those materials or other evidence, to determine any “disputed jurisdictional facts.” Id. (quoting Holt v. United States, 46 F.3d 1000, 1002–03 (10th Cir. 1995)). In reviewing a 12(b)(6) motion to dismiss, the court assumes the truth of well-pleaded facts and draws reasonable inference in a light most favorable to the plaintiff. E.g., Leverington v. City of Colo. Springs, 643 F.3d 719, 723 (10th Cir. 2011). But a claim survives only if “there is plausibility in the complaint.” Hall v. Witteman, 584 F.3d 859, 863 (10th Cir. 2009) (citations and quotations omitted). “A claim has facial plausibility when the plaintiff pleads factual content that allows the court to draw the reasonable inference that the defendant is liable for the misconduct alleged.” Id. (quoting Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009)). Threadbare recitals of elements, facts “merely consistent” with liability, “labels and conclusions,” or “unadorned, the-defendant- unlawfully-harmed me accusation[s]” are insufficient. Iqbal, 556 U.S. at 678; Leverington, 643 F.3d at 723 (quoting Bell Atl. Corp. v. Twombly, 550 U.S. 544, 555 (2007)); Gee v. Pacheco, 627 Case 2:15-cv-00741-TS Document 51 Filed 11/23/16 Page 10 of 19 vii F.3d 1178, 1184–85 (10th Cir. 2010) (citations and quotations omitted); Hall, 584 F.3d at 863 (citations and quotations omitted). In reviewing a motion to dismiss, the Court may rely on the facts as alleged in the complaint, but may also rely on all documents adopted by reference in the complaint, documents attached to the complaint, or facts that may be judicially noticed. See Fed. R. Civ. P. 10(c); Tellabs, Inc. v. Makor Issues & Rights, Ltd., 551 U.S. 308, 322–23 (2007). Case 2:15-cv-00741-TS Document 51 Filed 11/23/16 Page 11 of 19 1 LEGAL ARGUMENT Ms. Israel has brought claims against the University of Utah for copyright infringement, “false endorsement” and “failure to endorse” under the Lanham Act, and false endorsement under the Utah Truth-in-Advertising law, Utah Code tit. 13, ch. 11a. 22 Those claims should be dismissed because the University is immune from suit pursuant to the Eleventh Amendment to the U.S. Constitution. The Eleventh Amendment protects the University. It applies to Ms. Israel’s federal intellectual property claims and demands that those claims be dismissed with prejudice. It also applies to her state law claims, demanding that, if the University can be sued, it must be sued in state court. Accordingly, the University should be dismissed from this action entirely. I. The University Is Entitled to Eleventh Amendment Immunity. All claims brought by the Ms. Israel against the University of Utah are barred by the Eleventh Amendment to the U.S. Constitution. The amendment provides: The Judicial power of the United States shall not be construed to extend to 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. Such immunity bars suit against a state by its own citizens, Hans v. Louisiana, 134 U.S. 1, 10–11, 15–21 (1890), to suits against state officials sued in their official 22 It is unclear exactly which intellectual property counts in Plaintiffs’ Complaint are brought against the University. The copyright infringement counts—the First and Fifth Claims—are clearly brought against the University. (See Compl. ¶¶ 37–39 (heading title “University of Utah Actor in Infringement”). The Fourth Claim—Failure to Endorse under the Lanham Act—also mentions the University of Utah directly. (Id. ¶ 50.) The Second Claim—False Endorsement under the Lanham Act—does not mention the University or any defendants other than Defendants Strassberg and Rullo. The Third Claim alleges that “defendants” have violated state law, but the claim does not say which defendants. (Id. ¶ 48.) Out of an abundance of caution, the University assumes that it is named as a defendant in each of Ms. Israel’s claims. Case 2:15-cv-00741-TS Document 51 Filed 11/23/16 Page 12 of 19 2 capacities for retrospective monetary relief. Edelman v. Jordan, 415 U.S. 651, 676–77 (1974), and to suits for injunctive relief against the state or its agency. Ellis v. Univ. of Kan. Med. Ctr., 163 F.3d 1186, 1196 (10th Cir. 1998) (“The bar to federal court jurisdiction with respect to Kansas and its agencies applies both to claims for monetary and injunctive relief.”). Eleventh Amendment immunity applies not only to suits brought directly against state governments, but also to “arms of the state.” E.g., Wagoner v. Rural Water Dist. No. 2 v. Grand River Dam Auth., 577 F.3d 1255, 1258 (10th Cir. 2009). “[I]t is well-settled that the University of Utah is considered an ‘arm of the state’ entitled to Eleventh Amendment immunity ….” Yung- Kai Lu v. Univ. of Utah, No. 15-4179___ F. App’x ___, 2016 WL 4373337, at *2 (10th Cir. Aug. 16, 2016) (mem. decision & ord. not selected for publication) 23 (citing Watson v. Univ. of Utah Med. Ctr., 75 F.3d 569, 574–75 (10th Cir. 1996)). Eleventh Amendment immunity applies so long as it has not been waived by the state or abrogated by Congress. E.g., Pennhurst State Sch. & Hosp. v. Halderman, 465 U.S. 89, 99 (1984). As an arm of the state, the University of Utah is entitled to Eleventh Amendment immunity. As described below, it applies to Ms. Israel’s federal intellectual property claims, as well as her state statutory and common law claims. No abrogation or waiver is present. Accordingly, all claims against the University should be dismissed. II. The University Is Entitled to Eleventh Amendment Immunity Against Plaintiffs’ Federal Intellectual Property Claims. The copyright and unfair competition claims brought under federal law by Ms. Israel against the University are barred by the Eleventh Amendment to the U.S. Constitution. They are 23 Copies of all cases not selected for publication in an official report will be produced to the pro se Plaintiff. Case 2:15-cv-00741-TS Document 51 Filed 11/23/16 Page 13 of 19 3 subject to the protections of the “ultimate guarantee of the Eleventh Amendment,” that nonconsenting states are not subject to suit “by private individuals in federal court.” Bd. of Trs. of Univ. of Ala. v. Garrett, 531 U.S. 356, 363 (2001). One way in which states may be subject to suit for damages under federal law in federal court is if Congress validly abrogates the state’s immunity. See Muscogee (Creek) Nation v. Pruitt, 669 F.3d 1159, 1166 (10th Cir. 2012). Congress attempted to do so in both the Lanham Act and in the Copyright Act. However, Courts have determined that that attempted abrogation is invalid, and states (and state universities) remain immune from such suits. A. There Is No Valid Abrogation of Eleventh Amendment Immunity in the Lanham Act. The Supreme Court has directly held that Congress’s attempt to abrogate states’ Eleventh Amendment Immunity under the Lanham Act was invalid. College Savings Bank v. Fla. Prepaid Postsecondary Educ. Expense Bd., 527 U.S. 666 (1999). Even though Congress explicitly attempted to abrogate sovereign immunity in the Lanham Act, see Lanham Act § 43(a)(2), 15 U.S.C. § 1125(a)(2), the Court held that the Eleventh Amendment protects states from Lanham Act false advertising suits. Fla. Prepaid, 527 U.S. at 690. Noting that Congress did not have the authority to abrogate sovereign immunity under the Commerce Clause, id. at 672, the Court held that the common-law torts of unfair competition would not “by definition” encompass property interests protected by the Fourteenth Amendment, and thus could not be a valid basis to abrogate sovereign immunity. Id. at 674. The Court also held that a state’s voluntary choice to engage in interstate marketing and administration of a government program likewise did not result in an implicit waiver of sovereign immunity. Id. at 685–86. Case 2:15-cv-00741-TS Document 51 Filed 11/23/16 Page 14 of 19 4 The Court’s reasoning in Florida Prepaid has been held to apply to all federal unfair competition claims. A leading trademark scholar has concluded that “a trademark owner cannot sue a state for infringement in violation of the Lanham Act in either federal court or state court.” J. Thomas McCarthy, 4 McCarthy on Trademarks and Unfair Competition § 25:66 (4th ed. updated 2015); see also Bd. of Regents of Univ. of Wisc. Sys. v. Phoenix Software Int’l, Inc., 565 F. Supp. 2d 1007, 1013 (W.D. Wisc. 2008) (applying Florida Prepaid to Lanham Act trademark infringement and unfair competition claims). And lower courts have held that unfair competition claims are also barred by the Eleventh Amendment. E.g., State Contracting & Eng’g Corp. v. Florida, 258 F.3d 1329, 1335–36 (Fed. Cir. 2001); Va. Polytechnic Inst. & State Univ. v. Hokie Real Estate, Inc., 813 F. Supp. 2d 745, 751–52 (W.D. Va. 2001). This Supreme Court authority—buttressed by judicial consensus across the country— requires that Ms. Israel’s claims for failure to endorse, and false endorsement, brought pursuant to the Lanham Act, be dismissed. The Eleventh Amendment bars these claims, and the University’s Eleventh Amendment immunity has not been validly abrogated. B. There Is No Valid Abrogation of Eleventh Amendment Immunity in the Copyright Act. Ms. Israel’s copyright infringement claims are also barred because the University retains Eleventh Amendment immunity from suit for copyright infringement claims, and no valid abrogation of that immunity exists. In the same way that it attempted to abrogate sovereign immunity under trademark law, Congress attempted to abrogate states’ sovereign immunity under the Copyright Act. See 17 U.S.C. §§ 501(a) 511(a). However, that attempted abrogation has been deemed unconstitutional, just as the attempted abrogation of immunity from suit in the Lanham Act as deemed Case 2:15-cv-00741-TS Document 51 Filed 11/23/16 Page 15 of 19 5 unconstitutional in Florida Prepaid. Chavez v. Arte Pub. Press, 204 F.3d 601, 607–08 (5th Cir. 2000); accord Nat’l Ass’n of Bds. of Pharm. v. Bd. of Regents of Univ. Sys. of Ga., 633 F.3d 1297, 1312–19 (11th Cir. 2011) (exhaustively analyzing the state of the law and concluding that arms of the state—in particular universities—are immune from claims brought under the Copyright Act); Whipple v. Utah, No. 2:10-cv-811-DAK, 2011 WL 4368568, at *19–20 (D. Utah Aug. 25, 2011) (mem. decision & ord. not selected for publication) (collecting authority issued after Florida Prepaid and concluding that arms of the state are immune from copyright claims). “Federal district courts in and outside of the Fifth Circuit have been uniform in following Chavez,” and have thus uniformly held that Congress’s attempt to abrogate states’ sovereign immunity under the Copyright Act was unconstitutional. Wilcox v. Career Step, L.L.C., No. 2:08-cv-998-cw, 2010 WL 4968263, at *5 (D. Utah Dec. 1, 2010) (mem. decision & ord. not selected for publication); accord “Validity, Construction, and Application of Copyright Remedy Clarification Act, Pub. L. No. 101-533, 104 Stat. 2749 (codified at 17 U.S.C.A. §§ 501(a), 511),” 60 A.L.R. Fed. 2d 625 (originally published in 2011, updated 2016) (recognizing the uniformity in the law that “a school or university and its officers and employees [in their official capacities] … benefitted from [Eleventh Amendment] immunity” in copyright actions). Despite Congress’s attempt to abrogate state immunity under various federal intellectual property laws, states retain immunity from suit for copyright infringement and claims brought pursuant to federal law. Accordingly, Ms. Israel’s claims against the University—an arm of the State of Utah—should be dismissed. And because “the Eleventh Amendment prohibits actions for damages against states or state entities under any federal law, regardless of the forum, unless Case 2:15-cv-00741-TS Document 51 Filed 11/23/16 Page 16 of 19 6 there is an abrogation,” the dismissal should be with prejudice. Cardona Roman v. Univ. of P.R., 799 F. Supp. 2d 120, 133 (D.P.R. 2011). III. The University Is Entitled to Eleventh Amendment Immunity Against Plaintiffs’ State Law Claims. The Eleventh Amendment also bars litigation of Ms. Israel’s state law claims—failure to endorse as alleged in her original Complaint, as well as breach of fiduciary duty, promissory estoppel, and right to publicity as alleged in her Proposed Amended Complaint 24 —against the University in federal court. As described above, the University of Utah enjoys liability from suit as an arm of the state of Utah. It, and the State, have immunity from suit in federal court. See Utah Code § 63G-7-101(3) (retaining all immunities for governmental agencies and employees unless expressly waived); id. § 63G-7-501(1) (“The district courts [of the State of Utah] have exclusive, original jurisdiction over any action brought under this chapter.”). The University has not waived its Eleventh Amendment immunity. The Governmental Immunity Act of Utah, which applies to Plaintiff’s state claw claims, “does not operate to waive Utah’s Eleventh Amendment Immunity.” Lambertsen v. Utah Dep't of Corr., 922 F. Supp. 533, 538 (D. Utah 1995) aff'd, 79 F.3d 1024 (10th Cir. 1996) (dismissing intentional infliction of emotional distress, negligent retention of employee, invasion of privacy, and battery claims); Johns v. Stewart, 57 F.3d 1544, 24 The University has also argued that Plaintiff’s newly-pled claims should be dismissed with prejudice for failure to file a notice of claim and because the Governmental Immunity Act bars such claims. See Mem. in Opp. to Pl.’s Mot. for Leave to Amend (doc. 42) at 7–10. Because both the Immunity Act and the Eleventh Amendment implicate the Court’s subject-matter jurisdiction, the Court may address the Immunity Act issues before contemplating dismissal pursuant to the Eleventh Amendment and dismiss the claims with prejudice. E.g., Williams v. Colo. Dep’t of Transp., No. 09-cv-01959-PAB-MEH, 2010 WL 1781977, at * 1 n.3 (D. Colo. May 4, 2010)(ord. not selected for publication) (concluding that because state law torts were barred by the relevant state immunity act, the court “need not address” the argument that an arm of the state was entitled to Eleventh Amendment immunity). Case 2:15-cv-00741-TS Document 51 Filed 11/23/16 Page 17 of 19 7 1560 (10th Cir. 1995) (holding that Eleventh Amendment immunity bars contract claims). Further, the University has not waived immunity simply by entering an appearance or engaging in the minimal amount of litigation that has occurred so far (answering and including an Eleventh Amendment affirmative defense, agreeing to a scheduling order, providing initial disclosures, and making one set of written discovery requests). Richins v. Indus. Constru., Inc., 502 F.2d 1051, 1056 (10th Cir. 1974) (holding that the attorney general’s appearance and “litigating the case” does not constitute a waiver of Eleventh Amendment immunity); Univ. of Utah v. Shurtleff, 252 F. Supp. 2d 1264, 1283 (D. Utah 2003) (finding no waiver of Eleventh Amendment immunity, even though the Attorney General “appear[ed] in and litigate[d] the merits of the case, and had spoken in public about a “friendly lawsuit” to resolve an issue). If Ms. Israel has any state law claims that are cognizable against the University, she must follow the Immunity Act, and she must file them in state court. Accordingly, the statutory “failure to endorse” claim in her original complaint, along with any new state law claims Ms. Israel has attempted to assert in her Proposed Amended Complaint, should be dismissed on Eleventh Amendment immunity grounds. CONCLUSION For the foregoing reasons, the University of Utah respectfully requests that the Court grant its motion, dismissing all claims against it, and dismissing all federal claims brought against it with prejudice. Case 2:15-cv-00741-TS Document 51 Filed 11/23/16 Page 18 of 19 8 DATED this November 23, 2016. Office of the Utah Attorney General /s/ Kyle J. Kaiser KYLE J. KAISER Assistant Utah Attorney General Attorney for Defendants CERTIFICATE OF MAILING I certify that on November 23, 2016, I electronically filed the foregoing, MOTION TO DISMISS UNIVERSITY OF UTAH ON THE BASIS OF ELEVENTH AMENDMENT IMMUNITY AND MEMORANDUM IN SUPPORT, using the Court’s CM/ECF system. In addition, I certify that a true and correct copy of the foregoing was sent via electronic mail as well as placed in outgoing United States mail, postage prepaid, to: Esther Israel 757 South 900 East, #B Salt Lake City, UT 84102 estherisrael@yahoo.com /s/ Mandi Bartlett Case 2:15-cv-00741-TS Document 51 Filed 11/23/16 Page 19 of 19