Submit to Digest

Allen v. Cooper: Sovereign Immunity Allows North Carolina’s “Piracy” of Pirate Videos

Copyright Reports

Allen v. Cooper, No. 18-877 (March 23, 2020).

In a unanimous decision, the Supreme Court struck down the Copyright Remedy Clarification Act (“CRCA”), 17 U.S.C. § 511 (1990), which purported to prevent states from raising sovereign immunity as a defense when sued for copyright infringement. Sovereign immunity, a constitutional doctrine rooted in federalism, allows states to avoid lawsuits in federal courts when sued by individuals. In deciding so, the Court affirmed a summary dismissal of a copyright infringement claim by a videographer against the State of North Carolina.

The “piracy” claim began, somewhat ironically, from a project to study the submerged wreck of the Queen Anne’s Revenge, a ship that was commanded by the pirate Blackbeard. The ship sank off the coast of North Carolina in 1718 and its wreck was discovered in 1996. The plaintiff, Frederick Allen, was retained to document the recovery activities. Allen obtained copyrights in the videos and photos that he created in connection to his project. Around 2013, Allen protested the North Carolina Department of Natural and Cultural Resources’ unauthorized use of his work, as discussed in the Fourth Circuit’s decision. After an initial settlement that included a $15,000 payment to Allen and a clarification of each parties’ rights over Allen’s works, North Carolina kept posting his material online and Allen filed this federal lawsuit. North Carolina asserted sovereign immunity in its defense and the issue reached the Supreme Court.

Allen’s suit relied on the CRCA, a law that purports to abrogate the state's sovereign immunity against copyright claims. The Court’s opinion, written by Justice Kagan, provided an excellent discussion of how the doctrine of abrogation of sovereign immunity operates, in the opinion of Prof. Josh Blackman. In making this decision, Allen followed the template of Florida Prepaid Postsecondary Educ Expense Bd. v. College Sav. Bank, 527 U.S. 627 (1999), a case also dealing with abrogation of sovereign immunity for claims related to intellectual property rights. In Florida Prepaid, the relevant statute was the patent law analog of the CRCA, the Patent and Plant Variety Protection Remedy Clarification Act (“PCA”), 35 U.S.C. §§ 271(h), 296(a) (1992).

Under Seminole Tribe of Fla. v. Florida, 517 U.S. 44 (1996), abrogation of sovereign immunity by Congress demands express language in the statute and constitutional support. Both the PCA and the CRCA include the required express language, and most of the discussion in both Allen and Florida Prepaid focus on the constitutional support. A potential candidate is the Intellectual Property’s clause 8 in Art. I, Section 8 of the Constitution. Seminole Tribe, however, stated that the article I provisions are insufficient to enable Congress to abrogate sovereign immunity. The plaintiff questioned this rule by pointing to Central Va. Community College v. Katz, 546 U.S. 356 (2006), a case in which the Court found Congress could abrogate sovereign immunity in bankruptcy suits, which is a power provided by article I. The Court in Allen, however, clarified that bankruptcy is a sui generis exception to the rule of Seminole Tribe because of its history and, therefore, Katz merely created a carve-out in the rule of Seminole Tribe, without overturning it.

The second candidate for constitutional support of abrogation is found in section 5 of the 14th amendment. For this portion, however, a constitutional due process violation is required and the statute must be tailored to provide a remedy proportional to the constitutional violation in accordance with City of Boerne v. Flores, 521 U.S. 507 (1997). In both Allen and Florida Prepaid, the Court found that Congress did not have sufficient evidence of due process constitutional violations arising from copyright and patent infringement to the level that allows the complete abrogation of sovereign immunity provided by the respective statutes. Interestingly, the Court in Allen provided in dicta a blueprint for Congress to draft a constitutional law in this area. The blueprint, which Justice Thomas protested against in his concurrence in part, indicated that Congress could abrogate sovereign immunity in intellectual disputes if the legislation is tailored to due process violations, focusing on intentionality or recklessness of infringement. In view of the challenges to abrogation of state sovereign immunity by Congress, can individuals protect their intellectual property from infringement by the state? The Fourth Circuit opinion indicates that contracts might be used to that end. The terms of a settlement agreement between the State and Allen include a clause indicating that the parties may “avail themselves of all remedies provided by law or equity,” and Allen argued that this constituted a waiver of sovereign immunity. While this argument was unsuccessful, the Fourth Circuit stated that the waiver was insufficient only because it lacked an express consent to a lawsuit in federal courts. Parties dealing with State entities might be able to obtain a waiver of immunity through contracts, in accordance with Port Authority v. Feeney, 495 U.S. 299 (1990). While contracts are not always available, this tool should be kept in mind by practitioners.