March 25, 2020
On March 23, in Allen v. Cooper, the U.S. Supreme Court unanimously ruled that states are immune from copyright infringement suits. A significant decision affecting copyright law, the case has notable ramifications for both state governments and copyright holders.
The circumstances instigating the case began in 1996 when the state of North Carolina hired Intersal, a marine salvage company, to recover Queen Anne’s Revenge, the infamous Blackbeard flagship that had run aground off the coast of North Carolina in 1718. Intersal in turn hired petitioner Frederick Allen, a videographer, to document the recovery of the ship. For over a decade, Allen made videos and photographs of the recovery operations and registered copyrights in these works.
The suit arose when North Carolina published some of Allen’s works online without his consent. At the district court, the state moved to dismiss the suit on the ground of sovereign immunity, invoking the general rule that federal courts cannot hear suits brought by individuals against nonconsenting states. Allen, however, contended that Congress had abrogated the sovereign immunity of the states through the Copyright Remedy Clarification Act of 1990 (CRCA). The CRCA provides that a state “shall not be immune, under the Eleventh Amendment . . . or any other doctrine of sovereign immunity from suit in Federal court” for copyright infringement. The district court allowed the case to move forward in light of the CRCA, reasoning that congressional intent was clear and abrogation had a proper constitutional basis. The court concluded that precedent precluding Congress from using its Article I powers to abrogate state sovereign immunity left open some possible avenues for imposing liability.
On interlocutory appeal, the Fourth Circuit reversed, reasoning that the decision in Florida Prepaid Ed. Expense Bd. v. College Savings Bank applied to Section 5 of the Fourteenth Amendment no less than Article I. In Florida Prepaid, the Supreme Court held that Congress did not have the authority to abrogate state sovereign immunity from patent infringement suits through the Patent Remedy Act because the abrogation was not “congruent and proportional” to the injury to be remedied. Allen appealed to the Supreme Court, and the Court affirmed.
First, the Court explained that the Eleventh Amendment governing state sovereign immunity allows a federal court to entertain a suit against a nonconsenting state on two conditions: (1) “Congress must have enacted ‘unequivocal statutory language’ abrogating the States’ immunity from the suit,” and (2) Congress must have had authority under the Constitution to abrogate immunity.
The first prong was settled at the outset. The Court essentially said that the language of the CRCA makes it very clear that Congress intended that state sovereign immunity be abrogated for purposes of copyright infringement suits. Accordingly, the case turned on congressional authority to encroach on state sovereign immunity. Allen argued that Congress possessed such authority under its Article I power to provide copyright protection or under Section 5 of the Fourteenth Amendment.
First, Article I, Section 8, Clause 8 of the U.S. Constitution—the Intellectual Property Clause—grants Congress power “[t]o promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.” Allen argued that congressional authority to abrogate state sovereign immunity followed naturally from this clause. But the Court pointed to its decision in Florida Prepaid holding that Congress could not use its Article I power to abrogate state sovereign immunity in patent infringement suits. There, the Patent Remedy Act was at issue. In an earlier case, Seminole Tribe v. Florida, the Court had proscribed the use of Article I to circumvent sovereign immunity’s limits on federal jurisdiction. Based on that decision, the Court had held that Congress did not have authority to abrogate state sovereign immunity from patent infringement suits.
Noting that Article I applies to patents and copyrights alike, the Court extended the reasoning of Florida Prepaid to the CRCA, holding that Congress’s Article I powers stop at sovereign immunity. Allen attempted to argue that the Court’s decision in Central Va. Community College v. Katz offered relief from Florida Prepaid. In that case, the Court held that the Bankruptcy Clause of Article I allows Congress to subject nonconsenting states to bankruptcy proceedings. The Court disagreed, noting Katz was limited to the Bankruptcy Clause, and holding that even if it were not so limited, Florida Prepaid in combination with stare decisis would sink Allen’s argument.
Second, Congress can permit suits against states for violations of Section 1 of the Fourteenth Amendment, but it cannot alter what that Amendment proscribes. Thus the Court said a congressional abrogation under Section 5 of the Fourteenth Amendment is valid only if it sufficiently connects to conduct courts have held Section 1 of the Fourteenth Amendment to bar. For Congress to invoke its Section 5 authority, “[t]here must be a congruence and proportionality between the injury to be prevented or remedied and the means adopted to that end.” This involves courts’ consideration of the constitutional problem Congress faced and the scope of the relief Congress chose to address that problem or injury. In Florida Prepaid, for example, the Court reasoned that Congress had very little evidence of states having infringed patents, and no evidence that any instance of infringement by states had crossed constitutional boundaries. Thus the Court held that the Patent Remedy Act swept too far, given the absence of evidence of states “depriving patent owners of property without due process of law.”
Here, Congress commissioned a report regarding the effects of the Eleventh Amendment on copyright enforcement. The report ultimately concluded that “copyright proprietors have demonstrated they will suffer immediate harm if they are unable to sue infringing states in federal court.” But the Court determined that nothing in that report or the remainder of the legislative record sufficiently distinguished this case from Florida Prepaid. The report produced very little evidence of state copyright infringement and its author even acknowledged that state copyright infringement was “not widespread.” Moreover, the Court reasoned that neither the report nor the remainder of the legislative record showed a concern with whether the states’ copyright infringements violated the Due Process Clause. In order to constitute such a violation, the infringement must be both intentional and there must not be an adequate remedy for the infringement offered by the state. Thus the Court held that in the absence of constitutional harm, the CRCA does not pass muster under the “congruence and proportionality” test in light of Florida Prepaid.
Among other ramifications, the case provides some cautions for entities doing business with state entities where copyrighted materials might be generated in the course of such work. Nothing in the opinion suggests that such entities could not attempt by contract to secure a state’s agreement to refrain from copying such works, for example, thereby providing a possible remedy in state court.
For more information, please contact Fitch Even attorney Vincent R. Meyer, author of this alert.
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