The Supreme Court on Monday affirmed the Fourth Circuit’s decision upholding State sovereign immunity against claims of copyright infringement.[i]
The case arose over Petitioner Allen’s suit against North Carolina’s unauthorized use of copyrighted materials relating to the discovery and salvage of the pirate Blackbeard’s flagship “Revenge” off the coastal waters of that state. Petitioner relied on the provisions of the Copyright Remedy Clarification Act of 1990 (CRCA):[ii]
[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.[iii] [I]n such a suit a State will be liable, and subject to remedies, “in the same manner and to the same extent as” a private party.[iv]
North Carolina asserted sovereign immunity under the Eleventh Amendment:
“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 an- other State, or by Citizens or Subjects of any Foreign State.”
The Court relied on an earlier decision, Florida Prepaid Postsecondary Ed. Expense Bd. v. College Savings Bank,[v] which invalidated an almost identical statute (the Patent Remedy Act of 1990), to reach its decision.
The opinion noted that State sovereign immunity under the Eleventh Amendment is not absolute and the Court has recognized exceptions, in instances where Congress enacts a statute having “unequivocal statutory language” that abrogates a State’s sovereign immunity[vi] and there is some constitutional provision that excuses Congress’s encroachment on sovereign state prerogatives.[vii] In this case the first prong of the test was indisputably met. As for the second prong, Petitioner relied on Congress’s Article I power to grant copyrights, and the Fourteenth Amendment’s grant to Congress of the power to enforce the amendment’s due process provisions.
The Court rejected these arguments. The Article I power to grant copyrights (and patents) “impose a corresponding duty (i.e., not to infringe) on States no less than private parties,” according to the Court[viii]. Hence, abrogation of North Carolina’s sovereign immunity is the best, or only, way to protect Petitioner’s copyright (according to Petitioner). But, the opinion asserts, “[t]he problem for Allen is that this Court has already rejected his theory, in Florida Prepaid.” While that case involved Congress’s failed attempt to abrogate State sovereign immunity for patent infringement, the constitutional basis for copyright protection arises in in the same provision of Article I as patent protection (Section 8, clause 8) and thus that decision mandates the Court’s opinion here. The rubric from the case is that Congress does not have the power, under Article I, to “circumvent’ the limitations sovereign immunity places on federal jurisdiction. As stated in the opinion, “the power to ‘secur[e]’ an intellectual property owner’s ‘exclusive Right’ under Article I stops when it runs into sovereign immunity.”
Florida Prepaid, and stare decisis, were enough in the Court’s view to determine the outcome here, because finding abrogation of North Carolina’s sovereign immunity would be directly contrary to affirming Florida’s sovereign immunity in the Court’s earlier precedent. The only way to abrogate sovereign immunity in this case would be to overrule the Court’s recognition of Florida’s sovereign immunity, and there must be a “special justification” for doing so (as well as a belief that the earlier case had been wrongly decided), which the Court did not find here.
Regarding Section 5 of the Fourteenth Amendment, the Court relied on its “means-ends test,” wherein “Congress can permit suits against States for actual violations of the rights guaranteed in Section 1” of the Amendment. The Court requires a “congruence and proportionality between the injury to be prevented or remedied and the means adopted to that end.” Here, the Court found little evidence that the CRCA rectified a serious due process violation. Copyright infringement must be intentional, or at least reckless, for the due process protections of the Fourteenth Amendment to come to bear, and only where the State does not offer a remedy for the infringement.[ix]
In this case there was evidence supporting State infringement of copyrights (including a 155-page report from the Register of Copyrights). But the Court found the evidence “scarcely more impressive” (“only a dozen possible examples of state infringement” and “seven court cases brought against States” as well as “five [uncorraborated] anecdotes taken from public comments”) than the evidence for States’ patent infringement in Florida Prepaid. And only two of these examples raised any due process issues. Under this analysis the Court found that the CRCA failed the “congruence and proportionality” test and the outcome could not differ from the Court’s earlier decision in Florida Prepaid.
The opinion concludes with the Court suggesting that Congress could pass a statute abrogating State sovereign immunity. Noting that Congress passed both the Patent Remedy Act and the CRCA prior to the Court’s decision in Seminole Tribe, the opinion suggests that “Congress will know the rules” regarding “the importance of linking the scope of its abrogation to the redress or prevention of unconstitutional injuries—and of creating a legislative record to back up that connection” should Congress decide to pursue another statute to abrogate State sovereign immunity. Such a “tailored statute” could “effectively stop States from behaving as copyright pirates” and, as a consequence, “bring digital Blackbeards to justice.”
Kevin E. Noonan, Ph.D., is a partner with McDonnell Boehnen Hulbert & Berghoff LLP and serves as Chair of the firm’s Biotechnology & Pharmaceuticals Practice Group. An experienced biotechnology patent lawyer, Dr. Noonan brings more than 20 years of extensive work as a molecular biologist studying high-technology problems in serving the unique needs of his clients. firstname.lastname@example.org
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[i] Allen v. Cooper, No. 18–877 (Mar. 23, 2020)
[ii] Codified at 17 U. S. C. §511.
[iii] Id. at §511(a).
[iv] Id. at §511(b).
[v] Allen v. Cooper, No. 18–877 at 3, citing Florida Prepaid Postsecondary Ed. Expense Bd. v. College Savings Bank, 527 U. S. 627 (1999).
[vi] Id. at 5, citing Dellmuth v. Muth, 491 U. S. 223, 228 (1989).
[vii] Id., citing Kimel v. Florida Bd. of Regents, 528 U. S. 62, 78 (2000).
[viii] Id. at 6, citing Goldstein v. California, 412 U. S. 546, 560 (1973).
[ix] Id. at 12, citing Hudson v. Palmer, 468 U. S. 517, 533 (1984).