Intellectual Property

SCOTUS To Decide Whether States Can Be Sued For Copyright Infringement In Case Involving Blackbeard’s Ship

We will have to wait until next term to see how sovereign immunity fares at the high court.

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Somehow, within a month, I find myself writing two different columns involving copyright… and pirates. Not copyright “piracy,” but actual pirates. As in, eye patches, parrots, and swashbuckler pirates.

SCOTUS has agreed to hear a case — the facts of which involve a famous pirate ship — to determine whether a state can be sued for damages in a copyright case. Congress enacted the Copyright Remedy Clarification Act of 1990 (CRCA), which set out to abrogate a state’s Eleventh Amendment sovereign immunity in copyright cases and allow individuals to sue states for infringement. While SCOTUS has not ruled on the constitutionality of CRCA, developments between 1997 and the present have led to the widespread belief that states are indeed immune from copyright infringement case.

Before getting into the details of CRCA and the case SCOTUS will hear next term, let’s clear up a couple of things about what state sovereign immunity does — and does not — do in the intellectual property context. A state cannot be sued for damages in intellectual property cases. However, a state (and its officials acting in their official capacity) can be sued for injunctive relief or declaratory judgments. It’s not like a state can just get off scot-free for infringement; litigation is still expensive and they can be enjoined from further infringement. States are not completely immune from litigation. Additionally, contrary to what some critics of sovereign immunity claim, states generally don’t go around infringing intellectual property. While there may be good-faith, mistaken beliefs that a particular use is fair use, states and their subdivisions typically act in a responsible fashion with every intention of adhering to the law. It’s a little silly to suggest that a state will start screening Avengers: Endgame and rely on state sovereign immunity to avoid liability.

In Allen v. Cooper, the justices will consider whether Congress validly exercised its power in abrogating state sovereign immunity in copyright cases through enactment of the CRCA. The case involves the discovery of the infamous pirate Blackbeard’s ship, Queen Anne’s Revenge, off the coast of North Carolina. Allen filmed the shipwreck then claimed that North Carolina violated copyright by displaying the footage on the internet without authorization. North Carolina, in response, asserted that CRCA was unconstitutional. The Fourth Circuit agreed that CRCA was not a valid exercise of Congressional authority.

The Supreme Court’s decision to accept cert is a bit surprising since it seems to be well-understood that CRCA was not a valid exercise of Congressional authority and that states retain sovereign immunity in copyright cases. There are no circuit splits. Additionally, while SCOTUS has not determined whether CRCA is constitutional, it decided two very similar cases involving trademarks and copyright in 1997. Both cases, resulting in two separate decisions, involved the same litigants: Florida Prepaid Post-Secondary Education Expense Board and the College Savings Bank. These cases considered the Trademark Remedy Clarification Act of 1992 and the Patent and Plant Variety Protection Remedy Clarification Act of 1992. In both cases, SCOTUS ruled in 5-4 decisions that states are immune from suits in federal courts for violations of patent and trademark law (Justices Breyer, Ginsburg, Souter, and Stevens dissented in the pair of cases). In order for Congress to validly abrogate sovereign immunity, SCOTUS ruled, “Congress would need to identify conduct transgressing the Fourteenth Amendment’s substantive provisions, and must tailor its legislative scheme to remedying or preventing such conduct.” The Court looked at the legislative history of the statutes, which revealed relatively few instances of intention infringement of patents and trademark. Because the record did not demonstrate widespread deprivation of patents and trademark, Congressional action to abrogate sovereign immunity was not proportional and therefore invalid.

Following the Florida Prepaid cases in the copyright context, the Fifth Circuit found in Chavez v. Arte Publico Press that state universities (here, the University of Houston) have sovereign immunity under the Eleventh Amendment and CRCA represents an improper exercise of Congressional power. Here, the Fifth Circuit — relying heavily on the Florida Prepaid cases — found that for Congress to abrogate state sovereign immunity under the Fourteenth Amendment, there must be “congruence and proportionality between the injury to be prevented/remedied and the means adopted to that end.” The Fifth Circuit determined that the legislative history did not identify any pattern of constitutional violations or infringements by states nor any pattern of unremedied copyright infringement by states. Indeed, the legislative history of infringement by states is even more scant for CRCA than it was in the trademark in patent contexts. Additionally, the court noted that the legislative history of CRCA included only two allusions to state remedies, demonstrating that there was a failure to include information to state remedies for unlawful takings of private property by state governments or other possible remedies — such as breach of contract — that Congress did not consider when enacting CRCA. Additionally, CRCA fails because for Congress to determine that under the due process clause deprivation is actionable, it must be an intentional act; negligent acts causing unintended injury are an insufficient nexus. The CRCA failed to confine its reach to intentional acts.

While some may suggest that SCOTUS has taken the case to overturn the general understanding that states retain sovereign immunity in copyright cases, the Court’s recent decision in Franchise Tax Board of California v. Hyatt could provide an indication that it strongly supports sovereign immunity. There, in a 5-4 decision, SCOTUS upheld state sovereign immunity in cases brought in other state courts.

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Ultimately, we will have to wait until next term to see how sovereign immunity fares.

Krista L. Cox is a policy attorney who has spent her career working for non-profit organizations and associations. She has expertise in copyright, patent, and intellectual property enforcement law, as well as international trade. She currently works for a non-profit member association advocating for balanced copyright. You can reach her at kristay@gmail.com.

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