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IP/Entertainment Case Law Updates

Allen v. Cooper

U.S. Supreme Court invalidates Copyright Remedy Clarification Act of 1990 as unconstitutional, affirming Fourth Circuit decision that North Carolina is shielded by sovereign immunity from copyright infringement liability for use of petitioner’s copyrighted visual footage of salvage of Queen Anne’s Revenge, ship owned by infamous pirate Blackbeard, discovered off coast of North Carolina.

Petitioner Frederick Allen, a filmmaker, sued North Carolina for the state’s use of copyrighted photographs and video footage he took of salvage efforts of the Queen Anne’s Revenge, a ship owned by the infamous pirate Blackbeard, discovered off the coast of North Carolina.  

In 1996, a marine salvage company named Intersal Inc. discovered the shipwreck. Under federal and state law, the wreck belongs to North Carolina. Intersal in turn retained Allen to document the operation. For over a decade, Allen created videos and photos of divers’ efforts to salvage the Revenge’s guns, anchors and other remains. He registered copyrights in all those works. North Carolina published some of Allen’s videos and photos on the state’s website without permission.

Allen filed this action in federal district court, charging North Carolina with copyright infringement and seeking money damages. North Carolina moved to dismiss the suit on sovereign immunity grounds, invoking the general rule that federal courts cannot hear suits brought by individuals against nonconsenting states. Allen contended that an exception to the rule applied because Congress had abrogated the states’ sovereign immunity from copyright suits in the Copyright Remedy Clarification Act of 1990 (CRCA). The CRCA provides 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. The district court agreed, citing the U.S. Supreme Court’s 1999 decision in Florida Prepaid Postsecondary Ed. Expense Bd. v. College Savings Bank to support its finding that the CRCA’s abrogation of the state’s sovereign immunity had a proper constitutional basis under Section 5 of the Fourteenth Amendment. On appeal, the Fourth Circuit reversed, reading Florida Prepaid to prevent, not permit, the CRCA under Section 5.  (Read our summary of the Fourth Circuit’s decision here.) 

The Supreme Court granted certiorari. In a unanimous decision, the Court affirmed the Fourth Circuit’s decision, rejecting Allen’s arguments that Congress had authority to enact the CRCA under both Article I of the Constitution and Section 5 of the Fourteenth Amendment. 

Under the Eleventh Amendment, a federal court generally may not hear a suit brought by any person against a nonconsenting state. While the text of the Eleventh Amendment applies only if the plaintiff is not a citizen of the defendant state, the Court has permitted a federal court to entertain a suit against a nonconsenting state on two conditions: First, Congress must have enacted “unequivocal statutory language” abrogating the states’ immunity from the suit; and second, some constitutional provision must allow Congress to encroach on the sovereignty of the states. 

The Court did not dispute that Congress used unequivocal language to abrogate the states’ immunity in copyright suits in the CRCA, but it held that Congress did not have the authority to do so, citing Florida Prepaid as foreclosing all Allen’s arguments.

Under Article I, Congress has the power “[t]o promote 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.” That provision, known as the Intellectual Property Clause, enables Congress to grant both copyrights and patents. Allen argued that abrogation is the best way for Congress to secure a copyright holder’s rights against a state’s intrusion. However, the Court had already rejected this argument in Florida Prepaid, which held that Congress could not use its Article I power over patents to remove the states’ immunity. Allen could not overcome this stare decisis.

Under Section 5 of the Fourteenth Amendment, Congress also could strip the states of immunity. The Fourteenth Amendment imposes prohibitions on the states, including that none may “deprive any person of life, liberty, or property, without due process of law.” However, a congressional abrogation is valid under Section 5 only if it sufficiently connects to conduct courts have held Section 1 to proscribe, determined under a means-end test, which means there must be a congruence and proportionality between the injury to be prevented or remedied and the means adopted to that end.

The critical question was how far, and for what reasons, Congress has gone beyond redressing actual constitutional violations. An infringement must be intentional, or at least reckless, to come within the reach of the Due Process Clause in order to be considered to be depriving persons of their property rights. The evidence before the Court did not show intentional or reckless conduct. In fact, most state infringement was innocent or at worst negligent. Under Florida Prepaid, the CRCA also failed the “congruence and proportionality” test.

Summary prepared by Linna Chen and Lisa Rubin