In Allen v. Cooper1, the Supreme Court held that the copyright clause in the U.S. Constitution did not authorize Congress to abrogate states’ Eleventh Amendment immunity from copyright infringement. In addition, Congress’s authority to enforce the Fourteenth Amendment’s due process clause did not authorize it to abrogate states’ Eleventh Amendment immunity from copyright infringement suits. The Court acknowledged that Congress might have the power to craft a limited statute abrogating a state’s immunity where the state’s copyright infringement was intentional or possibly reckless.
Justice Clarence Thomas concurred with the majority but disagreed with the majority’s reasoning that stare decisis dictated the ruling. Justice Stephen Breyer, joined by Justice Ruth Bader Ginsburg, also concurred with the majority but disagreed on the majority’s interpretation of prior cases.
By a unanimous vote, the justices ruled that North Carolina was shielded by state sovereign immunity from a lawsuit filed by Frederick Allen, a filmmaker who sued the state for infringing his copyright by using his footage of the wreck of Queen Anne’s Revenge, the flagship of the infamous pirate Blackbeard. Allen argued that the Copyright Remedy Clarification Act of 1990 (CRCA) abrogated North Carolina’s immunity under 17 U.S.C. § 511(a).
The Court disagreed, and struck down the CRCA, holding Congress lacked the constitutional power to abrogate state immunity under this statute. The Court initially noted:
Congress has power under Article I “[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.” § 8, cl. 8. That provision—call it the Intellectual Property Clause—enables Congress to grant both copyrights and patents. And the monopoly rights so given impose a corresponding duty (i.e., not to infringe) on States no less than private parties.
The Court explained:
Section 5 of the Fourteenth Amendment, unlike almost all of Article I, can authorize Congress to strip the States of immunity. The Fourteenth Amendment “fundamentally altered the balance of state and federal power” that the original Constitution and the Eleventh Amendment struck. . . . Its first section imposes prohibitions on the States, including (as relevant here) that none may “deprive any person of life, liberty, or property, without due process of law.” Section 5 then gives Congress the “power to enforce, by appropriate legislation,” those limitations on the States’ authority. That power, the Court has long held, may enable Congress to abrogate the States’ immunity and thus subject them to suit in federal court. . . .
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. . . . Congress can permit suits against States for actual violations of the rights guaranteed in Section 1. . . . But Congress cannot use its “power to enforce” the Fourteenth Amendment to alter what that Amendment bars. . . . That means a congressional abrogation is valid under Section 5 only if it sufficiently connects to conduct courts have held Section 1 to proscribe.
To decide whether a law passes muster, this Court has framed a type of means-end test. For Congress’s action to fall within its Section 5 authority, we have said, there must be a congruence and proportionality between the injury to be prevented or remedied and the means adopted to that end.
In this case, the Court reasoned, the statute was unconstitutional because it afforded a uniform or consistent remedy, as opposed to a specific or tailored response to unconstitutional conduct by states. The Court, however, provided the following remark:
That conclusion, however, need not prevent Congress from passing a valid copyright abrogation law in the future. In doing so, Congress would presumably approach the issue differently than when it passed the CRCA. . . . Congress likely did not appreciate the importance of linking the scope of its abrogation to the redress or prevention of unconstitutional injuries—and of creating a legislative record to back up that connection. But going forward, Congress will know those rules. And under them, if it detects violations of due process, then it may enact a proportionate response. That kind of tailored statute can effectively stop States from behaving as copyright pirates. Even while respecting constitutional limits, it can bring digital Blackbeards to justice.
Therefore, the Court held that Article I’s intellectual property clause could not authorize Congress to abrogate state sovereign immunity. In addition, Section 5 of the Fourteenth Amendment could not authorize Congress to abrogate state sovereign immunity because the CRCA statute was not narrowly tailored.
What’s Next?
The Court’s ruling, Justice Elena Kagan wrote, should not be interpreted as prohibiting Congress from stopping “states from behaving as copyright pirates.” Keep in mind, however, that while states may currently be immune from copyright infringement, third parties that may be working for states are not immune from suit. In addition, in the event states abuse this immunity, according to the Court, Congress can enact more narrowly tailored laws to address specific types of state copyright violations.
1 Allen v. Cooper, 140 S.Ct. 994, 2020 USPQ2d 10217, 2020 WL 1325815 (2020).
Irah Donner is a partner in Manatt’s intellectual property practice and is the author of Patent Prosecution: Law, Practice, and Procedure, Eleventh Edition, and Constructing and Deconstructing Patents, Second Edition, both published by Bloomberg Law.