Appeal from the 295th District Court Harris County, Texas
Trial Court Case No. 2017-84942
consists of Chief Justice Radack and Justices Higley and
Richard Hightower Justice.
interlocutory appeal from the trial court's denial of a
plea to the jurisdiction, we must determine if a viable
constitutional takings claim can be asserted when the State
commits copyright infringement. We conclude that a
governmental unit's copyright infringement is not a
taking and that the trial court therefore erred in denying
the plea to the jurisdiction.
Olive Photography d/b/a Photolive, Inc. (Olive) sued the
University of Houston System, alleging an unlawful taking and
seeking just compensation under Article I, Section 17 of the
Texas Constitution and under the Fifth Amendment of the
United States Constitution. Olive, a professional
photographer, alleges that he took a series of aerial
photographs of the City of Houston at dusk in 2005. To take
these photographs, Olive rented a helicopter, hired a pilot,
and, utilizing special photography equipment, suspended
himself from the helicopter with a harness. While suspended
in the harness, Olive took photograph SKDT1082-"The
Cityscape"- the subject of this litigation.
registered The Cityscape with the United States Copyright
Office on November 18, 2005 and displayed it for purchase on
his website. Olive owned all rights associated with The
Cityscape, and his website had numerous references to
licensing the website's photographs, including an entire
page labeled "Copyrights and Usage," which
described the applicable copyright protections held in the
photographs and explicitly stated that "[t]he
unauthorized use of these images is strictly
alleges that sometime around June of 2012, the University of
Houston downloaded The Cityscape from Olive's website,
removed all identifying copyright and attribution material,
and displayed it on several webpages to promote the
University's C.T. Bauer College of Business. The
University never contacted Olive about using his photograph
and never compensated him for its use.
three years later, Olive discovered that his photograph was
being displayed on the University's Bauer College of
Business webpages. Olive informed the University of its
unauthorized use of the photograph and demanded that it cease
and desist this use. The University immediately removed the
photograph from the College's website. Olive further
alleges that the University's display of the photograph
without attribution allowed private actors such as Forbes
Magazine to republish and display The Cityscape without
Olive's permission and without compensation.
being sued by Olive, the University filed a plea to the
jurisdiction, asserting, among other things, that because
Olive failed to plead a viable takings claim, the University
retains governmental immunity and the trial court lacks
subject-matter jurisdiction. The trial court denied the plea,
and this interlocutory appeal followed.
University argues in four issues that the trial court erred
in denying its plea. The University first argues that a
copyright is not property under the federal or state takings
clauses. The University then argues that, if a copyright is
property under the federal or state takings clauses, its
copyright infringement of Olive's photograph is not a
taking, that it lacked capacity to take Olive's copyright
property, and that Olive did not sufficiently plead an
standard of review of a trial court's ruling on a plea to
the jurisdiction based on governmental immunity is de novo.
See Tex. Dep't of Parks & Wildlife v.
Miranda, 133 S.W.3d 217, 225-26 (Tex. 2004); Tex.
So. Univ. v. Gilford, 277 S.W.3d 65, 68 (Tex.
App.-Houston [1st Dist.] 2009, pet. denied). The plaintiff
has the burden to allege facts that affirmatively demonstrate
the trial court's subject-matter jurisdiction.
Gilford, 277 S.W.3d at 68 (citing Tex. Ass'n
of Bus. v. Tex. Air Control Bd., 852 S.W.2d 440, 446
(Tex. 1993)). We construe the pleadings liberally and accept
the plaintiff's factual allegations as true. See
Miranda, 133 S.W.3d at 226-27; Gilford, 277
S.W.3d at 68.
inverse-condemnation action is a constitutional claim in
which the property owner asserts that a governmental entity
intentionally performed acts that resulted in a
"taking" of the property for public use, without
formally condemning the property. See, e.g.,
Tarrant Reg'l Water Dist. v. Gragg, 151 S.W.3d
546, 554 (Tex. 2004). The Texas Constitution's takings
clause (Article I, Section 17) includes personal property.
Renault, Inc. v. City of Houston, 415 S.W.2d 948,
952 (Tex. Civ. App.-Waco 1967), rev'd on other
grounds, 431 S.W.2d 322 (Tex. 1968). It is well settled
that the Texas Constitution waives governmental immunity for
an inverse-condemnation (a takings) claim, but in the absence
of a properly pleaded takings claim, the governmental entity
retains immunity. City of Houston v. Carlson, 451
S.W.3d 828, 830 (Tex. 2014).
the pleaded facts constitute a viable takings claim is a
question of law. See Tex. Parks & Wildlife Dep't
v. Sawyer Trust, 354 S.W.3d 384, 390 (Tex. 2011);
Mayhew v. Town of Sunnyvale, 964 S.W.2d 922, 932-33
(Tex. 1998); City of Friendswood v. Horn, 489 S.W.3d
515, 525 (Tex. App.-Houston [1st Dist] 2016, no pet.). When
the plaintiff cannot establish a viable takings claim, the
trial court lacks subject-matter jurisdiction and should
grant a plea to the jurisdiction. Tex. Dep't of
Transp. v. A.P.I. Pipe & Supply, LLC, 397 S.W.3d
162, 166 (Tex. 2013).
copyright law provides that "[c]opyright protection
subsists . . . in original works of authorship fixed in any
tangible medium of expression, now known or later developed,
from which they can be perceived, reproduced, or otherwise
communicated, either directly or with the aid of a machine or
device." 17 U.S.C. § 102(a).
has been defined as:
The right to copy; specifically, a property right in an
original work of authorship (including literary, musical,
dramatic, choreographic, pictorial, graphic, sculptural, and
architectural works; motion pictures and other audiovisual
works; and sound recordings) fixed in any tangible medium of
expression, giving the holder the exclusive right to
reproduce, adapt, distribute, perform, and display the work.
Copyright, Black's Law Dictionary (10th ed.
2014); see also 17 U.S.C. § 102(a) (1-8)
(providing categories of works of authorship to include
literary works; musical works, including any accompanying
words; dramatic works, including any accompanying music;
pantomimes and choreographic works; pictorial, graphic, and
sculptural works; motion pictures and other audiovisual
works; sound recordings; and architectural works).
copyright in a work subsists from its creation and generally
endures for the life of the author and 70 years after the
author's death. See 17 U.S.C. § 302(a).
Civil remedies for copyright infringement include injunctive
relief. 17 U.S.C. § 502(a). A copyright owner can also
seek money damages from an infringer: either (1) his actual
damages and any additional profits of the infringer, or (2)
statutory damages, including a sum of not more than $150, 000
for willful infringement. See 17 U.S.C. § 504.
Federal courts have original and exclusive jurisdiction of
copyright claims, 28 U.S.C. § 1338(a), and all state-law
claims arising under federal law relating to copyrights are
preempted by federal law. 17 U.S.C. § 301(a); see
Butler v. Cont'l Airlines, Inc., 31 S.W.3d 642,
648-52 (Tex. App.-Houston [1st Dist.] 2000, pet. denied).
case of copyright infringement by a state actor, states have
Eleventh Amendment immunity from a suit for money damages in
federal court. See Chavez v. Arte Publico Press, 204
F.3d 601, 607-08 (5th Cir. 2000) (Chavez III)
(discussed below) (in copyright-infringement action against
University of Houston, holding that Copyright Remedy
Clarification Act (CRCA), 17 U.S.C. § 511, which
purported to abrogate Eleventh Amendment immunity and to
provide for state liability for copyright infringement, was
unconstitutional); see also Allen v. Cooper, 895
F.3d 337, 347-54 (4th Cir. 2018) (same), pet. for cert.
filed, (U.S. Jan. 4, 2019) (No. 18-877); Nat'l
Ass'n of Bds. of Pharmacy v. Bd. of Regents of Univ. Sys.
of Ga., 633 F.3d 1297, 1312-19 (11th Cir. 2011) (same);
Richard Anderson Photography v. Brown, 852 F.2d 114,
120 (4th Cir. 1988) (holding that state university had
Eleventh Amendment immunity against photographer's
copyright-infringement action). See generally 3
Melville B. Nimmer & David Nimmer, Nimmer on Copyright
§ 12.01[E] (Rev. Ed. 2019); 6 William F. Patry, Patry
on Copyright § 21.88 (Mar. 2019). But a copyright owner
can obtain prospective injunctive relief for copyright
infringement by a state actor under the Ex parte
Young doctrine. See, e.g., Nat'l
Ass'n of Bds. of Pharmacy, 633 F.3d at 1307-12
(addressing claim for injunctive relief under Ex parte
Young doctrine against state university for ongoing
copyright infringement); Hairston v. N.C. Agric. &
Tech. State Univ., No. 1:04 CV 1203, 2005 WL 2136923, at
*8 (M.D. N.C. Aug. 5, 2005) ("[T]he court finds that
Plaintiff sufficiently alleges an ongoing violation of
federal copyright law by Defendants, and the Ex parte
Young doctrine therefore applies to his copyright
infringement claim seeking prospective injunctive relief from
infringement, whether common law or statutory, is a tort.
Porter v. United States, 473 F.2d 1329, 1337 (5th
Cir. 1973); Ted Browne Music Co. v. Fowler, 290 F.
751, 754 (2d Cir. 1923) (stating courts "have long
recognized that infringement of a copyright is a tort").
Texas has not waived sovereign (governmental) immunity in the
Texas Tort Claims Act for copyright infringement by a
governmental unit. See Tex. Civ. Prac. & Rem.
Code § 101.021(1) (providing for limited waiver of
governmental immunity for claims of property damage, personal
injury, or death proximately caused by wrongful or negligent
conduct of governmental employee arising out of (1) use of
publicly owned motor-driven equipment or motor vehicle, (2)
premises defects, and (3) conditions or uses of certain
property); see also Schneider v. Ne. Hosp. Auth.,
No. 01-96-01098-CV, 1998 WL 834346, at *2 (Tex. App.-Houston
[1st Dist.] 1998, pet. denied) (not designated for
publication) ("It is up to the legislature to add the
tort of trademark infringement to those torts for which
immunity is statutorily waived."). Nor has Texas waived
its Eleventh Amendment immunity by consenting to suit in
federal court for copyright infringement. See generally
Seminole Tribe of Fla. v. Florida, 517 U.S. 44, 54-55,
67-72 & n.14 (1996)
Property and Takings
apparent recognition of the above legal landscape that
forecloses a copyright owner's claim for copyright
infringement against a state actor, Olive has asserted his
constitutional takings claims against the University. The
Texas Constitution's Takings Clause provides: "No
person's property shall be taken, damaged, or destroyed
for or applied to public use without adequate compensation
being made." Tex. Const. art. I, §
federal takings clause protects both real property and
personal property. Horne v. Dep't of Agric., 135
S.Ct. 2419, 2425-26 (2015) (holding that raisins were subject
of government taking: "The Government has a categorical
duty to pay just compensation when it takes your car, just as
when it takes your home."). A copyright, which is
intellectual property,  is a protected property
interest. Nat'l Ass'n of Bds. of
Pharmacy, 633 F.3d at 1317; see also 17 U.S.C.
§ 201(d) ("The ownership of a copyright may be
transferred in whole or in part by any means of conveyance or
by operation of law, and may be bequeathed by will or pass as
personal property by the applicable laws of intestate
succession."). See generally Pascale
Chapdelaine, The Property Attributes of Copyright,
10 Buff. Intell. Prop. L.J. 34 (2014). But while a copyright
is "property" or a protected "property
interest" for due-process purposes, that does not
necessarily mean that it is property for purposes of the
takings clause. See, e.g., Davida H. Isaacs, Not
All Property Is Created Equal: Why Modern Courts Resist
Applying the Takings Clause to Patents, and Why They Are
Right to Do So, 15 Geo. Mason L. Rev. 1, 36 (2007)
("Being property is a necessary requirement for Takings
Clause protection, but it is not a sufficient one.").
2008, it was noted that whether copyright is property under
the takings clause is "as yet
unlitigated." Tom W. Bell, Copyright as Intellectual
Property Privilege, 58 Syracuse
L. Rev. 523, 538 (2008). But see Porter, 473 F.2d at
1337 (copyright "infringement is not a 'taking'
as the term is constitutionally understood") (discussed
below). Relying on Zoltek Corp. v. United States,
442 F.3d 1345, 1350-53 (Fed. Cir. 2006) (holding that patent
infringement by federal government does not constitute taking
under Fifth Amendment), cert. denied, 551 U.S. 1113
(2007), vacated on other grounds on reh'g en
banc, 672 F.3d 1309 (Fed. Cir. 2012), and the Supreme
Court's denial of certiorari in Zoltek, the
author asserts that Zoltek "strongly suggests
that the same outcome would obtain for copyrights."
Bell, 58 Syracuse L. Rev. at 538; see also Isaacs,
15 Geo. Mason. L. Rev. at 1-2, 6-17 (discussing
Zoltek). But see Note, Copyright Reform
and the Takings Clause, 128 Harv. L. Rev. 973 (2015)
(arguing that copyright should be protected by takings
clause). The author further argues that the Supreme
Court's "definition of 'property' appears
not to shelter copyright" because of its description of
the sources of property interests protected from
takings and "copyrights exist only by the
grace of the Constitution." Id.
Texas case appears to have addressed whether a copyright is
property for purposes of the takings clause and whether
copyright infringement by a state actor is a taking. The case
closest on point is our unpublished 1998 decision in
Schneider, 1998 WL 834346. There, after recognizing
that a trademark is property, this court squarely held that a
governmental entity's (a hospital authority's)
"trademark infringement is not a compensable taking;
thus, sovereign immunity is not waived on the basis of an
unconstitutional taking." Id. at *2. After
noting that no authority classified trademarks as property
for purposes of the takings clause, this court stated that,
to the contrary, "there is authority that refutes such a
classification" and cited Porter for the
proposition that copyright infringement is not a
taking. Id. at *2 (citing
Porter, 473 F.2d at 1337). We therefore turn to
Porter and the other federal cases relied on by the
parties for their respective positions.
v. United States
involved in part a claim by Lee Harvey Oswald's widow for
the diminution in the copyright value of Oswald's
writings because of their publication in the Warren
Commission report. Porter, 473 F.2d at 1336.
We turn finally to the question whether Mrs. Porter can
recover for the diminution in value of Oswald's writings
attributable to their publication in the Warren Commission
Report. It is, of course, quite plain that the recovery
sought here is for infringement by the government of Mrs.
Porter's common law copyright interest in Oswald's
writings. Such infringement is not a "taking"
as the term is constitutionally understood. Rather, it
has always been held that infringement of copyright, whether
common law, Twentieth Century Fox Film Corp. v.
Dieckhaus, 153 F.2d 893 (CA 8, 1948), or statutory,
Turton v. United States, 212 F.2d 354 (CA 6, 1954)
constitutes a tort.
Id. at 1337 (emphasis added). But see Roth v.
Pritikin, 710 F.2d 934, 939 (1st Cir. 1983) ("An
interest in a copyright is a property right protected by the
due process and just compensation clauses of the
characterizes Porter as anomalous and as
superseded by both the Supreme Court in Horne and
the Fifth Circuit in Chavez. Because Horne
involved the taking of raisins-which are tangible personal
property, not intangible intellectual property-it is
inapposite; further, it made no attempt to address
noted above, Chavez, in part a
copyright-infringement action against the University of
Houston, held that Congress, by enacting the CRCA, could not
subject states to suit in federal court for copyright
infringement because of Eleventh Amendment immunity.
Chavez III, 204 F.3d at 607-08. In passing on the
constitutionality of the CRCA-Chavez was
not a takings case-the court addressed copyright as
property for due-process purposes and considered whether
Congress could abrogate state Eleventh Amendment immunity
under section 5 of the Fourteenth Amendment "to prevent
states from depriving copyright holders of their property
without due process of law." Id. at 604;
see id. at 605-07. In its analysis, the court stated
that the "underlying conduct at issue here is state