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On March 23, 2020, the Supreme Court of the United States held that the Copyright Remedy Clarification Act of 1990 (“CRCA”) does not abrogate the states’ sovereign immunity from copyright infringement suits.[1] The practical effect of this ruling is that copyright holders cannot sue the states for damages for copyright infringement.[2]
Allen was decided in reliance on and accordance with Florida Prepaid Postsecondary Ed. Expense Bd. v. College Savings Bank, a 1999 case in which the Supreme Court found unconstitutional the Patent Remedy Act (“PRA”), a related statute “basically identical” to the CRCA, that eliminated the states’ sovereign immunity from patent infringement suits.[3]
Applying the reasoning of Florida Prepaid and emphasizing stare decisis, the Supreme Court rejected the arguments that either Article I’s Intellectual Property Clause or Section 5 of the Fourteenth Amendment’s limitations on state power provide a basis for the CRCA’s abrogation of state sovereign immunity in copyright suits.[4]
Allen arose from a copyright infringement claim that Frederick Allen, a videographer, brought against the State of North Carolina, on the basis that the State had uploaded Allen’s videos and photos of the recovery of Queen Anne’s Revenge, the wrecked flagship vessel of the pirate Blackbeard, off the coast of North Carolina in 1996.[5]
As owner of the shipwreck, North Carolina contracted with the marine salvage company that discovered the wreck to salvage the remains of the historic ship.[6] To record the recovery of the wreck, the salvage company employed Allen, who registered copyrights in his videos and photos of the operations.[7] Allen first accused North Carolina of copyright infringement in 2013, and the State responded by settling with Allen for $15,000 and agreeing on the parties’ respective rights to the materials in question.[8]
Allen later discovered the State had exceeded the scope of the rights granted in the settlement, posting five of his videos online and using one of his photos in a newsletter.[9] He sued the State for copyright infringement in the United States District Court for the Eastern District of North Carolina.[10] The State moved to dismiss Allen’s suit on the grounds that the State was immune from liability under the doctrine of sovereign immunity.[11] The District Court ruled for Allen on his copyright claim on the basis that Congress had abrogated state sovereign immunity for such claims through the CRCA.[12] The District Court reasoned that Congress clearly stated its intent to abrogate state sovereign immunity, and that it could rely on its powers under Section 5 of the Fourteenth Amendment to justify the abrogation, though it could not rely on the Intellectual Property Clause of Article I.[13]
On interlocutory appeal, the Court of Appeals for the Fourth Circuit reversed the District Court, holding that the Intellectual Property Clause could not justify abrogation under the CRCA.[14] However, referencing Florida Prepaid, the Fourth Circuit also rejected abrogation through Section 5 of the Fourteenth Amendment on the basis that the statute was not “congruent and proportional” to the Fourteenth Amendment injury it sought to remedy, and accordingly found the CRCA invalid.[15] Allen appealed and the Supreme Court granted certiorari.[16]
The Supreme Court unanimously affirmed the Fourth Circuit, emphasizing that “Florida Prepaid all but prewrote [the] decision.”[17] In assessing the constitutionality of the CRCA, the Court elaborated that federal courts can only entertain suits against non-consenting states in the presence of: (1) “unequivocal statutory language” abrogating sovereign immunity; and (2) some constitutional provision allowing Congress to have thus encroached on the states’ sovereignty.[18]
As the first point was undisputed, the Court focused its analysis on Allen’s arguments that the Intellectual Property Clause and Section 5 of the Fourteenth Amendment empowered Congress to abrogate state sovereign immunity through the CRCA.[19] The Court rejected the Intellectual Property Clause arguments because (1) Florida Prepaid, in assessing the parallel PRA, held that Congress cannot “abrogate state sovereign immunity [under] Article I,” and (2) the Intellectual Property Clause does not distinguish between copyrights and patents and there are no material differences between the PRA and the CRCA.[20] The Court rejected Allen’s arguments for overcoming stare decisis to overturn Florida Prepaid.[21]
Turning to the arguments under the Fourteenth Amendment, the Court maintained that Congressional action under Section 5 requires “congruence and proportionality between the injury to be prevented or remedied and the means adopted to that end.”[22] Again, Florida Prepaid had addressed the question, finding that the PRA’s “‘indiscriminate scope’ was too ‘out of proportion’ to any due process problem.”[23] The Court emphasized that, as the CRCA and PRA were identical in scope, the CRCA could be upheld only if it responded to “materially stronger evidence of infringement, particularly of the unconstitutional kind.”[24] The legislative record provided no such evidence.[25] Accordingly, the Court held that, like the PRA with which it shared an identical “indiscriminate scope” and “uniform remedy” for statutory infringement, instead of specifically redressing or preventing unconstitutional conduct, the related copyright statute was invalid.[26]
While Allen preserves the sovereign immunity of states for copyright infringement claims, it does not prevent Congress from passing a new statute abrogating state sovereign immunity on the basis of Section 5 of the Fourteenth Amendment, if the proposed statute “link[s] the scope of its abrogation to the redress or prevention of unconstitutional injuries … and creat[es] a legislative record to back up that connection.”[27] The current evidence to support such an effort would appear to be lacking, and no such legislation appears likely to move forward. So the states will retain their sovereign immunity from copyright infringement claims, for the present time, at least.
Perhaps the most intriguing aspect of the Allen decision is found in its dueling concurring opinions. In those supplemental statements, Justice Thomas, on one side, and Justice Breyer (joined by Justice Ginsburg) on the other, addressed the role of stare decisis, perhaps with an eye towards other cases.[28] Justice Thomas wrote that he did not follow the majority’s view on stare decisis, and that an incorrectly reasoned prior decision should not be followed.[29] Concurring from the other direction, Justice Breyer noted that he joined in the Court’s judgment in this case, even though he disagreed with the Court’s holding in Florida Prepaid, because that decision was a binding and controlling precedent here.[30]
Although the Eleventh Amendment generally provides states with immunity from copyright infringement damages claims, other remedies may be possible. Injunctive relief is still available under what is known as the Ex Parte Young doctrine.[31] In Ex Parte Young, the Supreme Court held that when a state actor seeks to enforce an act that violates federal constitutional guarantees, the Eleventh Amendment does not bar a suit seeking an injunction for prospective relief from a continuing violation.[32] State universities, for example, have been enjoined from ongoing copyright infringement violations, and face potential liability for attorney’s fees in such actions.[33]
[1] Allen v. Cooper, No. 18-877, 2020 WL 1325815, at *9 (2020).
[2] See id.
[3] See Florida Prepaid Postsecondary Ed. Expense Bd. v. College Savings Bank, 527 U.S. 627 (1999).
[4] See Allen at *6, *9.
[5] Id. at *2. The vessel ran aground in 1718.
[6] Id.
[7] Id.
[8] Id.
[9] Id.
[10] Id.
[11] Id. The Court explained: “In our constitutional scheme, a federal court generally may not hear a suit brought by any person against a non-consenting State. That bar is nowhere explicitly set out in the Constitution. The text of the Eleventh Amendment (the single most relevant provision) applies only if the plaintiff is not a citizen of the defendant State. But this Court has long understood that Amendment to stand not so much for what it says as for the broader presupposition of our constitutional structure which it confirms.” Id. at *4 (internal quotes and footnotes omitted).
[12] Id. at *3.
[13] Id. (citing Allen v. Cooper, 244 F. Supp. 3d 525, 533–35 (E.D.N.C. 2017), rev’d and remanded, 895 F.3d 337 (4th Cir. 2018), aff’d, No. 18-877, 2020 WL 1325815 (2020)).
[14] Id.
[15] Id.
[16] Id.
[17] Id. at *9.
[18] Id. at *4 (citing Seminole Tribe of Fla. v. Fla., 517 U.S. 44, 56 (1996); Dellmuth v. Muth, 491 U.S. 223, 228 (1989); Kimel v. Fla. Bd. of Regents, 528 U.S. 62, 78 (2000)).
[19] See id. at *4–*9.
[20] Id. at *4, *6.
[21] See id. at *6.
[22] Id. (citing City of Boerne v. Flores, 521 U.S. 507, 520 (1997)).
[23] Id. at *7 (citing Florida Prepaid at 646–47).
[24] Id. at *8.
[25] See id.
[26] Id.
[27] See id. at *9.
[28] See id. at *9–*10.
[29] Id. at *9.
[30] Id. at *10.
[31] See Ex Parte Young, 209 U.S. 123, 159–60 (1908).
[32] See id.
[33] See, e.g., Cambridge Univ. Press v. Becker, No. 1:08-CV-1425-ODE, 2020 WL 998763 (N.D. Ga. Mar. 2, 2020).
