Texas A&M Protected from Copyright Infringement Claim

5th Circuit Finds Sovereign Immunity Shields University

As we enter September, college football is in the air, along with all the traditions that we have come to know over the past decades. One of the most famous of those traditions - “the 12th Man” concept - belongs to Texas A&M football. This may come as a surprise to the fans of the Seattle Seahawks, but that is neither here nor there.

It is this piece of college football lore that is the center of a recent U.S. Court of Appeals for the Fifth Circuit (“Fifth Circuit”) decision in Canada Hockey LLC d/b/a Epic Sports v. Team A&M University Athletic Department, et al; (5th Cir. 2021; Docket No. 20-20503).¹

FACTUAL BACKGROUND

What follows are the facts as stated in the Complaint. The Fifth Circuit, for the purposes of deciding the appeal, accepted all such allegations as true.

Michael Bynum is a sportswriter who became interested in the “12th Man” backstory and over a period of decades researched and wrote a book about the topic. As part of his preparation, Bynum interviewed several employees in the Athletic Department of Texas A&M University (“TAMU”).

The court noted that in 1990, TAMU registered “12th Man” as a trademark with the USPTO and “has aggressively enforced it.”

As Bynum continued to write his book, Gill hired another writer named Whit Canning to write a short biography of E. King Gill, who is credited with the genesis of the 12th Man transition at TAMU in 1922. Gill intended to use this biography, entitled “An A&M Legend Comes to Life”, in Gill’s book.

In June 2010, Bynum emailed TAMU personnel seeking photographs to include in his book. Bynum, as part of this correspondence, sent along a draft of his unpublished book to TAMU. The draft contained Bynum’s name, copyright date, an indication that Epic Sports owned the copyright to the book, and a statement that “no part of the book may be reproduced or used in any form or by any means . . . without the permission of the publisher.”

In January 2014, TAMU’s Athletic Department directed its staff to produce a written biography of Gill. According to the court:

[TAMU Associate Director of Media Relations] Marquardt directed his secretary to retype the Gill Biography that Bynum sent to Marquardt in 2010; remove any references to Bynum or Epic Sports; rewrite the byline to read “by Whit Canning, special to Texas A&M Athletics” to suggest that Canning was commissioned to write the Biography exclusively for the Athletic Department; and change the original title of the Biography from “An A&M Legend Comes to Life” to ‘The Original 12th Man.’”

TAMU then published the Gill Biography on the TAMU website and on the official TAMU Twitter account.

THE CLAIMS

Bynum sued the TAMU Athletic Department (not the University itself) for: 1) direct copyright infringement under the Copyright Remedy Clarification Act (“CRCA”), 17 USC § 501; 2) contributory copyright infringement; 3) violation of the Digital Millennium Copyright Act (“DMCA”) 17 USC § 1202; and other theories of liability.

The U.S District Court dismissed the complaint on a Rule 12(b)(6) motion filed by TAMU, which resulted in the appeal to the 5th Circuit.

HOLDING

The TAMU Athletic Department is, for all intents and purposes, a part of TAMU and thus enjoys state sovereign immunity. Under Allen v. Cooper, 140 S. Ct. 992 (2020), the Supreme Court ruled that Congress lacked authority to abrogate the states’ sovereign immunity for copyright infringement claims. [N.B. See my previous discussion of this case: Cooper’s Revenge.] Therefore, TAMU is shielded from copyright infringement claims. The District Court’s dismissal on the TAMU 12(b)(6) Motion to Dismiss is affirmed.

THE COURT’S ANALYSIS

The Fifth Circuit utilized the six factor test articulated in Clark v. Tarrant County, 798 F.2d 736 (5th Cir. 1986) to determine that:

All six Clark factors weigh in favor of finding that the Athletic Department is entitled to arm-of-the-state status. Accordingly, we conclude that the Athletic Department is a part of TAMU and therefore enjoys state sovereign immunity.

The Fifth Circuit then relied on the Allen case to establish that TAMU’s sovereign immunity was not abrogated by the CRCA.

You can read the Fifth Circuit Court’s opinion in its entirety here.

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1. It should be noted that this opinion is unpublished and the court wrote that its opinion in this case is non precedential all except in limited circumstances under 5th Circuit Rule 47.5.4. However, because this opinion provides a window into the thought process of the federal appellate bench on a significant copyright claim, it is being analyzed herein.