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SCOTUS Sinks the CRCA, Confirms States Are Immune From Copyright Suits

A unanimous decision from the Supreme Court of the United States in Allen v. Cooper affirmed a previous ruling by the US Court of Appeals for the Fourth Circuit and held that states cannot be sued for copyright infringement, thus invalidating a 1990 statute aimed at allowing such recourse against state governments.

IN DEPTH


On March 23, 2020, the Supreme Court of the United States issued a unanimous decision in Allen v. Cooper invalidating the Copyright Remedy Clarification Act (CRCA), a 1990 statute intended to provide copyright owners with the power to sue a US state government for infringement. The Supreme Court held that states cannot be sued for copyright infringement.

Background

In 1996, marine salvage company Intersal, Inc., discovered the wreck of the Queen Anne’s Revenge, the pirate ship of the infamous Blackbeard, and was hired to recover the wreck by the state of North Carolina, which owned the shipwreck. Intersal hired local videographer Frederick Allen to document the process, and Allen registered copyrights in a decade’s worth of videos and photos of the wreckage recovery.

Allen first objected to the state of North Carolina’s use of his copyrighted content in 2013 after he discovered the state was using his footage and photos for tourism and other marketing campaigns. The parties settled an initial dispute for $15,000, but wound up in federal district court shortly thereafter when Allen identified ongoing instances of infringement by the state.

The district court sided with Allen in his claim that the CRCA abrogated the states’ sovereign immunity from copyright lawsuits, and declined North Carolina’s motion to dismiss Allen’s lawsuit on grounds of such sovereign immunity. On appeal, however, the US Court of Appeals for the Fourth Circuit reversed and referred to the Supreme Court’s 1999 precedent under Florida Prepaid v. College Savings Bank, which struck down the Patent Remedy Act, a federal statute similar to the CRCA that allowed for patent infringement lawsuits against states. Because the Fourth Circuit’s decision ultimately invalidated a federal statute, the Supreme Court granted certiorari.

The Supreme Court’s Opinion

Justice Kagan opened with an explanation of sovereign immunity and the exceptions thereto, noting that the Supreme Court has permitted a federal court to sustain a suit against a nonconsenting state only if (1) Congress has enacted “unequivocal statutory language” abrogating the states’ immunity from a suit, and (2) some constitutional provision allows Congress to have so intruded on the states’ sovereignty.

The CRCA, Kagan explained, used clear language to abrogate the states’ immunity from copyright infringement suits. Accordingly, the question at issue was whether Congress actually had the constitutional authority to allow for such abrogation of immunity. Here, the Court turned to its decision in Florida Prepaid, which foreclosed each of Allen’s arguments, the Court confirmed.

Article I Grant of Power to Protect Intellectual Property

In his support of the CRCA, Allen argued that Congress’s authority to abrogate sovereign immunity from copyright lawsuits comes from Article I of the constitution, which allows Congress to grant patents and copyrights for the purpose of promoting “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.” How else, Allen contended, can Congress adequately secure an author’s exclusive rights unless it allows for abrogation of sovereign immunity over copyright lawsuits.

The Court quickly dismissed the Article I approach, however, and pointed to Florida Prepaid and supporting precedent Seminole Tribe, which invalidated the Patent Remedy Act and held that the power to secure an intellectual property owner’s exclusive rights under Article I “stops when it runs into sovereign immunity.”

Section 5 of the 14th Amendment

Allen also turned to Section 5 of the 14th Amendment for support of the CRCA, pointing to its grant of authority to Congress to strip the states of immunity. Here, the Court explained that a Section 5 abrogation must be tailored to “remedy or prevent” conduct infringing the 14th Amendment’s Section 1 substantive prohibitions. In other words, congressional abrogation under Section 5 must be sufficiently connected to violations of due process or equal protection. The Court articulated this as a “congruence and proportionality between the injury to be prevented or remedied and the means adopted to that end.”

The Court acknowledged that the 14th Amendment might “no doubt” care about copyright infringement as a potential deprivation of a property right, but it also found that deprivation of such a right under the 14th Amendment would require reckless or intentional infringement. The Court again looked to Florida Prepaid, which invalidated the Patent Remedy Act after finding no identified pattern of unconstitutional patent infringement by the states. Similarly, the Court found abrogation under the CRCA to be disproportional to any existing due process violation, and thus disconnected from a right under Section 1 of the 14th Amendment.

Justice for Future “Digital Blackbeards”

Before affirming the Fourth Circuit under the Florida Prepaid framework, Kagan made it clear that Congress may very well pass a valid copyright abrogation law in the future that is properly tailored to the “congruence and proportionality” test. “Even while respecting constitutional limits” Kagan noted, “[Congress] can bring digital Blackbeards to justice.”

Justice Thomas and Justice Breyer (joined by Justice Ginsburg) issued concurring opinions with respect to the ultimate judgment, while disagreeing with certain aspects of the majority opinion.

© 2020 McDermott Will & Emery

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About this Author

Sarah Bro, McDermott Will Emery Law Firm, Intellectual Property Attorney
Associate

Sarah Bro is an associate in the law firm of McDermott Will & Emery LLP and is based in the Firm’s Orange County office.Sarah focuses her practice on trademark prosecution and trademark litigation support.

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