Meaghan H. Kent December 21 2020 States can invoke sovereign immunity against claims of copyright infringement Venable LLP | Intellectual Property - USA Meaghan H. Kent Intellectual Property IntroductionFactsDecisionCommentIntroductionOn 23 March 2020 the Supreme Court unloaded its cannons on the Copyright Clarification Act (CRCA) 1990, holding in Allen v Cooper that Congress lacks authority to abrogate states' immunity from copyright infringement suits.(1) The unanimous decision found that the court's previous holding in a case rejecting the sovereign immunity abrogation clause in the nearly identical Patent Remedy Act compelled a similar result.(2) Thus, states are now effectively immune from copyright infringement actions unless Congress creates a new law permitting abrogation of sovereign immunity in this context.FactsIn 1996 a marine salvage company discovered the centuries-old wreck of the Queen Anne's Revenge, the 1717-18 flagship belonging to Edward Teach, better known as the pirate Blackbeard, off the North Carolina coast. The lengthy salvage process was filmed and photographed by Frederick Allen, who registered his works with the Copyright Office. The state of North Carolina then used some of his works online and in print before taking them down and settling with him for $15,000. When he requested that the state take his registered works down a second time, the North Carolina legislature passed Blackbeard's Law, which declares that all documentation of shipwrecks is considered part of the public record.Allen challenged the law in court in the Eastern District of North Carolina, seeking to hold the state monetarily liable under the CRCA. The CRCA explicitly abrogates sovereign immunity, placing states on the same footing as private parties for purposes of copyright infringement. North Carolina moved to dismiss on the basis of sovereign immunity and lost, before winning the argument at the Fourth Circuit on interlocutory appeal on the basis that Florida Prepaid is controlling precedent and requires that sovereign immunity prevail. The Supreme Court affirmed this decision.DecisionThe opinion of the Supreme Court, written by Justice Kagan, explains that sovereign immunity may be abrogated if statutory language abrogating it is unequivocal and if a constitutional provision gives Congress the power to do so. The CRCA clearly calls for an abrogation of sovereign immunity, including in its text 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.(3) Therefore, the question entertained by the Supreme Court distilled to whether there is justification in the Constitution for the CRCA to abrogate sovereign immunity and whether the evidence of this is sufficient to override the court's on-point decision in Florida Prepaid.Allen advanced two potential sources of congressional authority: the IP clause of Article I and Section 5 of the 14th Amendment. The Supreme Court's opinion explains that Florida Prepaid explicitly found the IP clause to be insufficient grounds to abrogate sovereign immunity and that, under stare decisis, the facts here did not reach the special justification necessary to overrule existing precedent. Further, the due process clause of the 14th Amendment could not give Congress authority for this law because there was simply not enough evidence that states were routinely and intentionally committing acts of copyright infringement to merit such a sweeping waiver of immunity. Here, too, there was not enough compelling evidence to justify overturning Florida Prepaid.The opinion concludes with a less-than-subtle hint to Congress: this "conclusion, however, need not prevent Congress from passing a valid copyright abrogation law in the future…. That kind of tailored statute can effectively stop states from behaving as copyright pirates".(4)There were two concurrences, one by Justice Thomas and one by Justice Breyer. Thomas disagreed with the majority's heavy-handed messaging approach to Congress regarding the creation of a new statute and disagreed with the standard for stare decisis invoked by Kagan's opinion. He also indicated that he "believe[s] the question whether copyrights are property within the Fourteenth Amendment's Due Process Clause remains open" and would welcome a new case to entertain that question.(5) Justice Breyer stated in his concurrence that he also disagreed with the holding in Florida Prepaid and other precedent cited in Kagan's opinion, but felt that the decision properly deferred to that erroneous holding.(6)CommentThe Supreme Court's finding that the CRCA improperly abrogated state sovereign immunity effectively eliminates copyright infringement actions against states. While the court determined that there was not currently widespread infringement that could implicate the due process clause, this decision may encourage such widespread infringement. With sovereign immunity in place for states, one can imagine the textbooks, software, music, movies, photographs and other creative rights that may now be used by states without licence and without repercussion. Further, at least under existing sovereignty law, this would extend to state agencies and instrumentalities acting as "an arm of the state".(7)Congress is rather preoccupied at the moment with COVID-19, but perhaps in due time – if there does prove to be mass infringement resulting from this decision – it will take note of Kagan's suggestion and pass a new law to prevent future state looting of copyrighted works.For further information on this topic please contact Meaghan Kent at Venable LLP by telephone (+1 410 244 7400) or email ([email protected]). The Venable LLP website can be accessed at www.venable.com.Endnotes(1) 18-877, 589 US (2020).(2) Florida Prepaid Postsecondary Ed Expense Bd v College Savings Bank, 527 US 627 (1999).(3) 17 USC § 511(a).(4) 589 US at *16.(5) Id at *2 (Thomas, J concurring).(6) Id at *2 (Breyer, J concurring).(7) Regents of Univ of Ca v Doe, 519 US 425 (1997).