Allen v. Cooper: Supreme Court Upholds State Sovereign Immunity in Copyright Row Over State’s Unauthorized Use of Videos and Images of Blackbeard’s Famed Shipwreck

n a technical win for states facing federal claims under the Copyright
Act, on Monday, March 23, 2020, the United States Supreme Court struck down the
Copyright Clarification Act of 1990 (the “CRCA”), which had allowed states to
be sued in federal court for copyright infringement.  Allen
v. Cooper, No. 18-877, 2020 WL 1325815 (U.S. Mar. 23, 2020).  The Supreme Court, however, did not foreclose
the possibility of later abrogating such sovereign immunity, should Congress
draft a tailored, constitutional statute addressing infringement by states.  The decision is available here.

The underlying action was brought by videographer Frederick Allen, who
was hired by marine salvage company Intersal, Inc. to document the recovery of Queen Anne’s Revenge, a vessel
commandeered by Edward Teach (better known as Blackbeard), and shipwrecked
nearly 300 years ago off the North Carolina Coast.  Allen registered the copyrights in all his
works created during the ten-year excavation with the U.S. Copyright Office,
including videos and photographs of guns, anchors, and other remains on the
ship.

The state of North Carolina, which had engaged and
contracted with Intersal to conduct the recovery efforts but did not have
authorization or a license to use certain of Allen’s works, published some of
Allen’s photographs and videos online and in a newsletter.  In response to the unauthorized publications, Allen
sued the state for copyright infringement in federal district court.

North Carolina moved to dismiss, invoking the doctrine of sovereign immunity, which precludes federal courts from hearing suits brought by individuals against nonconsenting states.  According to Allen, however, the doctrine was abrogated in the copyright context by Congress with its enactment of the CRCA, which provides, in pertinent part, that states “shall not be immune, under the Eleventh Amendment [or] any other doctrine of sovereign immunity, from suit in Federal court” for copyright infringement.  17 U. S. C. § 511(a).  The district court agreed with Allen and denied North Carolina’s motion. 

North Carolina appealed the case to the U.S. Court of Appeals for the Fourth
Circuit, which reversed the district court’s ruling, relying heavily on Florida Prepaid Postsecondary Ed. Expense
Bd. v. College Savings Bank, 527 U. S. 627 (1999), which had repudiated the
Patent and Plant Variety Protection Clarification Act (“Patent Remedy Act”);
the Patent Remedy Act was modelled after the CRCA with identical language concerning
sovereign immunity. While the district court had conceded that Florida Prepaid precluded Congress from
using its Article I powers (the power to “[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”) to take away a state’s
sovereign immunity, it opined that abrogation of a state’s immunity could still
be achieved under Section 5 of the Fourteenth Amendment, which authorizes
Congress to “enforce” the commands of the due process clause. 

In reversing the district court’s ruling, the Fourth Circuit cited the
requirement that a Section 5 abrogation be “congruent and proportional” to the
Fourteenth Amendment injury.  Because the
Supreme Court had previously rejected Congress’s attempt, in the Patent Remedy
Act, to abolish the states’ immunity in patent infringement suits, the Fourth
Circuit held that there was nothing to distinguish the situation in Allen in the context of copyright, which
involved a statute with identical language, and related allegations of
intellectual property infringement.  

In an opinion authored by Justice Kagan, the Court unanimously sided
with the Court of Appeals, holding that “Florida
Prepaid all but prewrote our decision today.”  The Court agreed that Article I did not give
Congress the authority to enact the CRCA, per the reasoning in Florida Prepaid.  While Allen argued that the Court’s post-Florida Prepaid decision in Cent. Virginia Cmty. Coll. v. Katz, 546
U.S. 356 (2006) – abrogating sovereign immunity with respect to Article I’s bankruptcy
clause – changed the analysis, the Court distinguished Katz as “a good-for-one-clause-only holding” that only concerned the
bankruptcy clause.  

The Court’s central issue with the CRCA was informed by language found
in Section 5 of the Fourteenth Amendment which requires that Congress enforce
limitations on states’ authority when they violate due process with
“appropriate legislation.”  The word
“appropriate” in this context has been interpreted to mean that there must be
“a congruence and proportionality between the injury to be prevented or
remedied and the means adopted to that end.” 
Because, the Court explained, an infringement must be intentional, or at
least reckless, to come within the reach of the due process clause, and because
the CRCA would impermissibly abrogate states’ sovereign immunity for merely
negligent infringement or honest mistakes (which would not violate due process,
according to the Court), the CRCA was unconstitutional.  

Allen asserted that the CRCA’s legislative record – namely, a 1988 report
by the then-Register of Copyrights arguing that individuals would suffer immediate
harm if they were unable to sue infringing states in federal court – was enough
to distinguish it from the Patent Remedy Act at issue in Florida Prepaid.  But the
Court found the purported evidence of states’ infringement in that legislative
record to be unimpressive because, despite undertaking an exhaustive search, the
Register only came up with a dozen possible examples of state infringement,
some of which were not corroborated.  The
CRCA, the Court opined, was enacted to “guard against sloppiness,” not correct
constitutional wrongs, and this justification was not sufficient to withstand
constitutional scrutiny. 

Significantly, the Court did leave an opening for Congress to pass a
valid copyright abrogation law and “effectively stop states from behaving as
copyright pirates” or “digital Blackbeards” in the future, if it “appreciate[s]
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.”

While the Allen decision
certainly sets a limitation on an individual’s ability to prosecute certain
copyright claims, it has left the door open for Congress to draft a statute
abrogating state sovereign immunity where a state’s infringement is intentional
or reckless.  Furthermore, because such a
determination is often fact-specific, if such a statute is enacted, federal
courts may see an increase in cases filed against states that proceed, at the
very least, to the discovery stage.  But
for now, copyright owners do not have any recourse against states for copyright
infringement, which likely will cause concern to publishers and others in the
creative community as to whether state governments will take advantage of the
safe passage the Court has provided them at least in the short run.