A Collision of Patents, Copyrights, and Piracy on the High Seas

ALLEN V. COOPER

Before Kagan, Roberts, Alito, Sotomayor, Gorsuch, Kavanaugh, Thomas, Breyer, and Ginsburg. Appeal from the Fourth Circuit.

Summary:  States cannot be sued for copyright infringement as the Copyright Remedy Clarification Act’s abrogation of State sovereign immunity was invalid under the Eleventh Amendment and § 5 of the Fourteenth Amendment.

North Carolina contracted with Intersal, Inc. to salvage the shipwrecked Queen Anne’s Revenge—Blackbeard’s infamous pirate ship.  Intersal hired videographer Frederick Allen to photograph and record videos of the dives.  Allen registered copyrights in these works.  North Carolina posted five of Allen’s videos online and published one of the photographs.  Allen sued for copyright infringement.  North Carolina moved to dismiss on sovereign immunity grounds, but the District Court denied the motion holding that the Copyright Remedy Clarification Act (CRCA), which reads in the relevant part, “[a]ny State . . . shall not be immune . . . from suit . . . for a violation of any of the exclusive rights of a copyright owner,” clearly stated Congress’s intent to abrogate State sovereign immunity for copyright claims.  The District Court further held that although Congress could not use its Article I powers to abrogate State sovereign immunity, the CRCA’s abrogation was based on § 5 of the Fourteenth Amendment.

In an opinion by Judge Niemeyer, the Fourth Circuit reversed.  The Fourth Circuit found that under § 5, the CRCA’s abrogation provision must be “congruent and proportional” to the Fourteenth Amendment injury it sought to remedy.  The Fourth Circuit then applied Fla. Prepaid Postsecondary Educ. Expense Bd. v. College Savings Bank, 527 U.S. 627, 630 (1999) (“Fla. Prepaid”), which struck down the Patent Remedy Act’s analogous abrogation of State sovereign immunity and found that the CRCA’s “equally broad” provision, which rested on a “similar legislative record” was insufficient under § 5.

In an opinion by Justice Kagan, the Supreme Court affirmed the Fourth Circuit with all nine justices concurring in the judgment.  The Supreme Court reiterated that States could not be sued without their consent unless two conditions were met.  First, “Congress must have enacted unequivocal statutory language abrogating the States’ immunity.”  And second, “some constitutional provision must allow Congress to have thus encroached on the States’ sovereignty.”  The Supreme Court found that the CRCA clearly expressed Congress’s intent to abrogate.  With respect to the second condition, the Supreme Court rejected Allen’s argument that the Intellectual Property Clause of the Constitution authorized the CRCA’s abrogation under Fla. Prepaid.  As the Intellectual Property Clause could not support the Patent Remedy Act’s abrogation in the patent context it could not do so in the analogous copyright context.  Allen then argued that the CRCA’s abrogation was authorized under § 5 of the Fourteenth Amendment, which gave Congress the “power to enforce by appropriate legislation” the Fourteenth Amendment’s Due Process Clause.  The Supreme Court applied Fla. Prepaid to determine whether “there [was] a congruence and proportionality between the injury to be prevented or remedied and the means adopted to that end.”  The Supreme Court held that there was only “exceedingly slight” evidence of Constitutional harm on the Congressional record: a dozen examples of potential State copyright infringement, most of which were “honest mistakes” and not Due Process injuries.  Thus, the Supreme Court held the CRCA’s abrogation of State sovereign immunity’s “‘indiscriminate scope’ was too ‘out of proportion’ to any due process problem” and was not a valid exercise of authority under § 5 of the Fourteenth Amendment.

Editor: Paul Stewart

Written by: Ben K. Shiroma & Kendall Loebbaka