The Supreme Court ruled on Monday in Allen v. Cooper, No. 18-877, that state governments are immune from copyright infringement claims in spite of Congress’s Copyright Remedy Clarification Act (CRCA) of 1990. The Court’s decision was no great surprise due to its prior ruling in Florida PrepaidPostsecondary Ed. Expense Bd. v. College Savings Bank, 527 U.S. 627 (1999), a patent infringement case.
The suit involves Blackbeard’s ship Queen Anne’s Revenge, which lies at the bottom of the ocean off the coast of Beaufort, North Carolina (its resting place since it ran aground in 1718). Plaintiff Frederick Allen, a videographer who filmed the shipwreck recovery efforts and who owns copyright registrations in those works, sued the state of North Carolina after the state posted the videos online. North Carolina moved to dismiss the copyright infringement claim on state sovereign immunity grounds and Allen countered that the CRCA removed state sovereign immunity in copyright infringement cases. The District Court agreed with Allen, but the Fourth Circuit reversed. The issue on appeal was whether Congress acted within its authority to abrogate state immunity from copyright infringement in the CRCA under either Article 1, Section 8, Clause 8 (the Intellectual Property Clause) or Section 5 of the Fourteenth Amendment to the Constitution.
Generally, the sovereign immunity doctrine prohibits lawsuits against a state unless the state consents. However, Congress may abrogate immunity where it (1) uses “unequivocal statutory language” to do so, and (2) has acted “pursuant to a valid exercise of power” as stated in Seminole Tribe of Fla. v. Florida, 517 U.S. 44 (1996).
The parties did not dispute that Congress satisfied (1), but they disagreed on whether Congress had authority to act based on either the Intellectual Property Clause or Section 5 of the Fourteenth Amendment.
The Court turned to its prior holding in Florida Prepaid that Congress could not use its Article I power under the Intellectual Property Clause to abrogate state sovereign immunity from patent infringement suits (citing Seminole Tribe of Fla. v. Florida, 517 U.S. 44, 56 (1996) [“preclud[ing] Congress from using its Article I powers ‘to circumvent’ the limits sovereign immunity ‘place[s] upon federal jurisdiction’”]). Given that the Intellectual Property Clause covers both patents and copyrights, as well as the similarity of language and purpose between the Patent Remedy Act and the CRCA, the Court was compelled to reach the same conclusion.
In rebuttal, Allen argued that the Court’s subsequent decision in Central Va. Community College v. Katz, 546 U.S. 356 (2006) allowed for a “clause-by-clause” approach to evaluate whether a particular constitutional provision authorizes the abrogation of sovereign immunity. The Court found that the Katz ruling rested on the unique history of the Bankruptcy Clause and was limited thereto. Regardless of Katz, Justice Kagan opined that “Florida Prepaid, together with stare decisis, would still doom Allen’s argument.”
Allen also argued that Section 5 of the Fourteenth Amendment allows Congress to abrogate state sovereign immunity as part of its power to enforce the Amendment’s substantive prohibitions. This argument also failed. The Court found that the CRCA failed the “congruence and proportionality” test outlined in City of Boerne v. Flores, 521 U.S. 507 (1997), because it suffered the same shortcomings as the Patent Remedy Act analyzed in Florida Prepaid. In that case, the court required a pattern of intentional conduct (not innocent or negligent conduct), for which there is no adequate state remedy.
What lies ahead? Justice Kagan charted a course for Congress to enact another statute by including examples of “intentional, or at least reckless” infringement and limiting application to states that fail to offer an adequate state remedy. In response, Justice Thomas opined in his concurrence that the Court should be careful not to “purport to advise Congress on how it might exercise its legislative authority, nor give our blessing to hypothetical statutes or legislative records not at issue here.” Justice Thomas also advised that “the question whether copyrights are property within the original meaning of the Fourteenth Amendment’s Due Process Clause remains open” and that he was willing to consider the matter in the appropriate case.
Until Congress rights its ship, states may claim sovereign immunity in any suit claiming piracy or plundering of another’s copyright.
For more information about copyright infringement litigation, please contact your Fish attorney or email us at [email protected].
Author: Sarah Kelleher
The opinions expressed are those of the authors on the date noted above and do not necessarily reflect the views of Fish & Richardson P.C., any other of its lawyers, its clients, or any of its or their respective affiliates. This post is for general information purposes only and is not intended to be and should not be taken as legal advice. No attorney-client relationship is formed.
Sarah Kelleher is an Associate in Fish & Richardson’s Boston Office. Sarah counsels clients on trademark, trade dress, trade secret and copyright matters with a focus on trademark clearance, prosecution and enforcement in the U.S. and abroad. Her experience includes representing trademark owners in opposition and cancellation proceedings...