From The Field

March 24, 2020

In a unanimous decision issued on March 23, 2020, the Supreme Court held that Congress’ attempt to strip states of their sovereign immunity from copyright infringement suits “lacked a valid constitutional basis.”  (Slip Op. at 1.)  Justice Kagan’s opinion in Allen v. Cooper, 589 U.S. ___ (2020), follows closely the Court’s prior decision in Florida Prepaid Postsecondary Ed. Expense Bd. V. College Savings Bank, 527 U.S. 627 (1999).  That case held that Congress’ parallel attempt to abrogate sovereign immunity in the patent context was also unconstitutional.

The Facts and Procedural History

The facts of Allen are simple.  The famed pirate Blackbeard’s ship ran aground off the coast of North Carolina in 1718.  The ship sank and remained submerged for almost 300 years.  A company named Intersal discovered the shipwreck in 1996.  Although federal and state law mandated that the wreck belonged to North Carolina, the state contracted with Intersal to take charge of the recovery.  Intersal retained plaintiff Frederick Allen, a local videographer, to document the operation. 

Over the course of the next decade, Allen created videos and photos of divers’ efforts to salvage guns, anchors, and other remains from the ship.  North Carolina published some of Allen’s photos and videos without his consent, and Allen sued the state for copyright infringement.  North Carolina moved to dismiss on the ground of sovereign immunity. 

The district court denied the motion, based on its view that Congress had abrogated the states’ sovereign immunity from copyright suits in 17 U.S.C. § 511(a).  The Fourth Circuit reversed, holding that the Florida Prepaid case controlled, and that Congress’ attempt to abolish state immunity was ineffective.  The Supreme Court granted cert last year.  In yesterday’s ruling, the Court affirmed the Fourth Circuit.

The Court’s Analysis

The Court began its analysis by noting that, “[i]n our constitutional scheme, a federal court generally may not hear a suit brought by any person against a non-consenting State.”  (Slip Op. at 4.)  The Court has, however, historically acknowledged certain exceptions to sovereign immunity.  Two conditions must apply.  “First, Congress must have enacted ‘unequivocal statutory language ‘ abrogating the States’ immunity from the suit.”  (Id. at 5 (citation omitted).)  “And second, some constitutional provision must allow Congress to have thus encroached on the States’ sovereignty.  Not even the most crystalline abrogation can take effect unless it is ‘a valid exercise of constitutional authority.’”  (Id. (citation omitted).) 

The parties and the Court agreed that the first step here was satisfied.  Section 511(a) of the Copyright Remedy Clarification Act (CRCA) unambiguously 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.  This “‘could not have [made] any clearer’ Congress’s intent to remove the States’ immunity.”  (Id. (citation omitted).)  “The [only] contested question [was] whether Congress had authority to take that step.”  (Id.) 

The plaintiff Allen pointed to two constitutional provisions as sources for Congress’ supposed authority:  Article I, § 8 of the Constitution (which gave Congress the power to grant copyright protection), and § 5 of the Fourteenth Amendment (which gave Congress the authority to enforce the commands of the Due Process Clause).  (Id.)  Justice Kagan’s opinion holds that Florida Prepaid forecloses both arguments. 

No Authority Under Article I, § 8

Congress has the power under Article I, § 8 of the Constitution to “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.”  This “Intellectual Property Clause” enables Congress to grant both copyrights and patents.  (Id. at 6.)  Allen argued that “Congress’s authority to abrogate sovereign immunity from copyright suits naturally follows.”  (Id.) 

But Florida Prepaid had already rejected that argument in the patent context when it held that “Congress could not ‘abrogate state sovereign immunity [under] Article I[.]”  (Id. at 7 (citation omitted).)  At this point, Allen was stuck, for the Intellectual Property Clause applies equally to patents and copyrights.  Just as it did for patents, “the power to ‘secure’ an intellectual property owner’s ‘exclusive Right’ under Article I stops when it runs into sovereign immunity.”  (Id. (citation omitted).) 

Allen then “claim[ed], however, that a later case offers an exit ramp from Florida Prepaid.”  (Id.)  In Central Va. Community College v. Katz, 546 U.S. 356, 359 (2006), the Court “held that Article I’s Bankruptcy Clause enabled Congress to subject nonconsenting States to bankruptcy proceedings[.]”  (Id.)  Allen argued that the same should be true in the copyright context.  But Katz did not help Allen.  Katz rested on what the Court called “bankruptcy exceptionalism,” i.e., what Katz referred to as “the ‘singular nature’ of bankruptcy jurisdiction.”  (Id. (citation omitted).)   

Justice Kagan explains that the Bankruptcy Clause was “unique” among Article I’s grants of authority, in that it “embraced the idea that federal courts could impose on state sovereignty.”  (Id. at 8.)  At the time of the Founding, the states “had wildly divergent schemes for discharging debt, and often refused to respect one another’s discharge orders.”  (Id. (citation omitted).)  “The Framers’ primary goal in adopting the [Bankruptcy] Clause was to address that problem….,” and, “in that project, the Framers intended federal courts to play a leading role.”  (Id. (citation omitted).)  The Court held that none of this applied to the Intellectual Property Clause of Article I. 

In addition, because “there is no difference between copyrights and patents under the Clause…, [the Court] would have to overrule Florida Prepaid if [it] were to decide this case Allen’s way.”  (Id. at 9.)  Stare decisis did not allow this.  Absent some “special justification,” Allen “cannot overcome stare decisis.”  (Id. at 10.)  The “charge of error alone” did not suffice.  (Id.) 

No Authority Under § 5 of the Fourteenth Amendment

Allen also looked to § 5 of the Fourteenth Amendment for Congress’ authority to abrogate sovereign immunity.  The Court rejected this argument too. 

Section 1 of 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.’”  (Id. at 10.)  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.”  (Id.)  But, “[f]or an abrogation statute to be ‘appropriate’ under Section 5, it must be tailored to ‘remedy or prevent’ conduct infringing the Fourteenth Amendment’s substantive prohibition;” in other words, “a congressional abrogation is valid under Section 5 only if it sufficiently connects to conduct courts have held Section 1 to proscribe.”  (Id.) 

Accordingly, “there must be a congruence and proportionality between the injury to be prevented or remedied and the means adopted to that end.”  (Id. at 11.)  Courts have to “consider the constitutional problem Congress faced – both the nature and extent of state conduct violating the Fourteenth Amendment[,]” and the “scope of the response Congress chose to address that injury.”  (Id.)  And, so, the Court asked here, “When does the Fourteenth Amendment care about copyright infringement?”  (Id.)  The answer was:  not very often.  

The Court acknowledged that “copyrights are a form of property,” and that the “Fourteenth Amendment bars the States from ‘depriv[ing] a person of property’ without due process of law.”  (Id.)  But “merely negligent act[s]” do not deprive a person of property.  “[A]n infringement must be intentional, or at least reckless, to come within the reach of the Due Process Clause.”  (Id.)  Historical copyright infringement by states just does not fit the bill. 

In the patent context, Florida Prepaid found that “Congress did not identify a pattern of unconstitutional patent infringement.”  (Id. at 12.)  The same was true here of copyright infringement.  “[T]he concrete evidence of States infringing copyrights (even ignoring whether those acts violate due process) is scarcely more impressive than what the Florida Prepaid Court saw.  Despite undertaking an exhaustive search, [Congress] came up with only a dozen possible examples of state infringement.”  (Id. at 14.)  The congressional record “acknowledged that state infringement is ‘not widespread’ and that ‘the States are not going to get involved in wholesale violation of the copyright laws.’”  (Id. (citation omitted).)  The Court underscored that “[o]f the 12 infringements listed in the [congressional] report, only two appear intentional, as they must be to raise a constitutional issue.”  (Id. at 15.)

The Court concluded that “[t]his is not, to put the matter charitably, the stuff from which Section 5 legislation ordinarily arises.”  (Id.)  “Under Florida Prepaid, the CRCA thus must fail our ‘congruence and proportionality’ test.”  (Id. (citation omitted).)  The reason was that, “as in Florida Prepaid, the law’s ‘indiscriminate scope’ is ‘out of proportion’ to any due process problem.”  (Id. at 16 (citation omitted).) 

Possible Congressional Action Could Be Constitutional

The Court closed its analysis by stating that its opinion “need not prevent Congress from passing a valid copyright abrogation law in the future.”  (Id.)  At the time it enacted 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.”  (Id.)   

It is difficult to predict how the Court might react to a future statute that is more narrowly tailored.  However, based on the Court’s discussion about what type of State infringement rises to the level of a due process concern, it is possible that a statute that abrogated immunity only for willful or intentional copyright infringement could pass muster.  Indeed, Justice Kagan closes her opinion by noting that a “tailored statute can effectively stop States from behaving as copyright pirates.”  She states that if it “respect[s] constitutional limits,” Congress “can bring digital Blackbeards to justice.”  (Id.) 

Justice Thomas’ Concurrence

Justice Thomas concurred in the result, but only concurred in part with Justice Kagan’s opinion.  Justice Thomas did not join in the Court’s discussion about future copyright legislation.  He stated that the Court “should opine on ‘only the case before us in light of the record before us.’”  (Thomas Op. at 2 (citation omitted).)  He also thought that “the question [of] whether copyrights are property within the original meaning of the Fourteenth Amendment’s Due Process Clause remains open.”  (Id.) 

Perhaps most importantly, Justice Thomas disagreed with the Court’s analysis of stare decisis.  Justice Kagan’s opinion states that “we need ‘special justifications’ to overrule precedent because error alone ‘cannot overcome stare decisis.’”  (Id. at 1 (citation omitted).)  But Justice Thomas wrote that “[i]f our decision in Florida Prepaid were demonstrably erroneous, the Court would be obligated to correct the error, regardless of whether other factors support overruling the precedent.’”  (Id. (citation omitted).)

Justice Breyer’s Concurrence

Justice Breyer (joined by Justice Ginsburg) also concurred in the judgment, but wrote a separate opinion.  Justice Breyer stated that Article I, § 8 gives Congress the power to enact copyright laws, and that states “have ‘a specific duty’ not to infringe that [which] ‘is assigned by law’ and upon which individual rights depend.”  (Breyer Op. at 1 (quoting Marbury v. Madison)).  Justice Breyer thus wrote that Florida Prepaid was wrongly decided.  “But recognizing that [his] longstanding view has not carried the day, and that the Court’s decision in Florida Prepaid controls this case, [he] [nevertheless] concur[red] in the judgment.”  (Id. at 2.) 

Author: Marc J. Pernick