In an unanimous ruling, the United States Supreme Court held that copyright owners cannot sue states for copyright infringement when states have copied or made use of their works without their consent. Sovereign immunity shields the states from any such claims and Congress’ attempt to abrogate that immunity in the Copyright Remedy Clarification Act of 1990 ( the “CRCA”) was contrary to constitutional principles. See Allen v. Cooper, US, No. 18-877 (March 23, 2020). Absent congressional action, copyright owners will need to resort to remedies available to them by the individual states, if any, to recover for acts of copyright infringement.
The doctrine of sovereign immunity generally bars private lawsuits against states unless the states have consented to such actions. If a state has not waived sovereign immunity, a party may still bring suit in cases where Congress has validly abrogated the state’s immunity. To determine whether Congress validly abrogated a state’s sovereign immunity, courts evaluate whether Congress unequivocally expressed an intent to abrogate a state’s immunity and has validly done so pursuant to the Fourteenth Amendment.
There is no question that Congress enacted the CRCA to abrogate the sovereign immunity of states for copyright infringement. The CRCA amended 17 U.S.C. § 511(a) to provide:
Any State, any instrumentality of a State, and any officer or employee of a State or instrumentality of a State acting in his or her official capacity, shall not be immune, under the Eleventh Amendment of the Constitution of the United States or under any other doctrine of sovereign immunity, from suit in Federal Court by any person, including any governmental or nongovernmental entity, for a violation of any of the exclusive rights of a copyright owner provided by sections 106 through 122, for importing copies of phonorecords in violation of section 602, or for any other violation under this title.
The CRCA further specified that a State stands in the identical position as a private defendant—exposed to liability and remedies “in the same manner and to the same extent.” see 17 U.S. C. §511(b).
Prior to the Supreme Court’s decision, the CRCA had been struck down as unconstitutional by district and appellate courts in the 1st, 2nd, 4th, 5th, 6th, 9th, and 11th Circuits. In doing so, the courts applied the tests set forth by the Supreme Court in Seminole Tribe v. Florida, 517 U.S. 44 (1996) and, significantly, in the patent context in Florida Prepaid v. College Savings Bank, 527 U.S. 627 (1999). In both cases the Supreme Court held that the Eleventh Amendment prohibits Congress from using its Article I powers to abrogate states’ sovereign immunity.
In Allen v. Cooper, Frederick Allen, a videographer, documented the salvage operations of the shipwrecked Queen Anne’s Revenge, Blackbeard’s flagship. In 1718 the ship ran aground on a sandbar a mile off of Beaufort, North Carolina and sank. The wreck was undisturbed for nearly 300 years. After the wreck was discovered, Allen created videos and photos of divers’ efforts to salvage the Revenge’s remains and registered his copyrights in his works. Without Allen’s permission, North Carolina posted five of Allen’s videos online and used one of his photos in a newsletter. Seeking money damages, Allen sued North Carolina for copyright infringement in federal district court.
North Carolina moved to dismiss the action on the grounds of sovereign immunity. The district court agreed with Allen that the CRCA had properly abrogated any such immunity. 244 F. Supp. 3d 525, 533-535 (EDNC 2017). The district court reasoned that “Congress has stated its intent to abrogate sovereign immunity for copyright claims against a state” and that while abrogation was not possible under Congress’ Article 1 powers (in view of Florida Prepaid), Congress had the power to do so under Section 5 of the Fourteenth Amendment to stop the States’ “pattern” of “abus[ive]” copyright infringement. Id.
On appeal, the Court of Appeals for the Fourth Circuit reversed concluding that Florida Prepaid prevented recourse to Section 5 as well as Article 1. The Fourth Circuit reasoned that any abrogation under Section 5 must be “congruent and proportional” to the Fourteenth Amendment injury Congress seeks to remedy. 895 F. 3d 337, 350 (2018). The Fourth Circuit did not see any difference between the CRCA, which attempted to abrogate States’ immunity for copyright infringement, from Congress’ failed attempt to abrogate States’ immunity for patent infringement claims in the Patent Remedy Act. Id. at 352.
On June 3, 2019, the Supreme Court granted a petition for certiorari to decide whether Congress had the power to repeal the states’ immunity from lawsuits for copyright infringement when it enacted the CRCA.
The Supreme Court took little time to conclude that its decision in Florida Prepaid, rejecting Congress’ attempt to abrogate the States’ immunity from claims of patent infringement via the Patent Remedy Act, required the same result in the context of copyright infringement claims under the CRCA. Relying on stare decisis, the Court saw no basis for distinguishing between the two forms of intellectual property in the context of an Article 1 analysis:
“Because Congress could not “abrogate state sovereign immunity [under] Article I,” Florida Prepaid explained, the Intellectual Property Clause could not support the Patent Remedy Act. 527 U. S., at 636. And to extend the point to this case: if not the Patent Remedy Act, not its copyright equivalent either, and for the same reason. Here too, the power to “secur[e]” an intellectual property owner’s “exclusive Right” under Article I stops when it runs into sovereign immunity. §8, cl. 8.”
Seeing no material difference between the two statutes’ provisions, the Supreme Court concluded that it would have to overrule Florida Prepaid if it were to decide the case Allen’s way. As stare decisis, is a “foundation stone of the rule of law, ” reversing a decision, would require a “special justification, ”over and above the belief “that the precedent was wrongly decided.” Halliburton Co. v. Erica P. John Fund, Inc., 573 U. S. 258, 266 (2014). No such justification existed in the present case.
The Supreme Court also rejected arguments advanced that the CRCA was valid under Section 5 of the Fourteenth Amendment. For an abrogation statute to be “appropriate” under Section 5, it must be tailored to “remedy or prevent” conduct infringing the Fourteenth Amendment’s substantive prohibitions. City of Boerne v. Flores, 521 U. S. 507, 519 (1997). A congressional abrogation is valid under Section 5 only if it sufficiently connects to conduct courts have held Section 1 to proscribe. To be valid, “[t]here must be a congruence and proportionality between the injury to be prevented or remedied and the means adopted to that end.” Boerne, 521 U. S., at 520.
In Florida Prepaid, the Court saw little evidence in the legislative record to justify the expansive abrogation of immunity from any and all claims of patent infringement and associated remedies. There was little evidence that States were infringing patents at all let alone a “pattern of unconstitutional patent infringement.” Further, Congress had not considered available state remedies for patent infringement Because Congress could have tailored any abrogation to the actual alleged injuries, e.g. suits for willful and intentional conduct or suits for states which did not provide any remedy for patent infringement, the Patent Remedy Act was “out of proportion” to any alleged due process harm and, as a result, not valid. The Supreme Court saw nothing different in its analysis of the legislative history of the CRCA: the record showed at most a dozen possible examples of copyright infringement by the states and, considered in its entirety, fell far short of the “congruence and proportionality” test. Because of its sheer scope, the CRCA was an invalid abrogation statute.
Interestingly, the Court emphasized that Congress had the power to abrogate States’ sovereign immunity for patent and copyright infringement. But any abrogation had to be tailored to the actual harm, consistent with the “congruence and proportionality” test, rather than the sweeping attempts made by the Patent Remedy Act and the CRCA.