When Congress Cancelled State Immunity for Copyright Infringement, Did it Violate the U.S. Constitution?

by Dennis Crouch

Allen v. Cooper representing North Carolina (Supreme Court 2019)

The Supreme Court has granted certiorari in a sovereign immunity copyright case.

Issue Presented: Whether Congress validly abrogated state sovereign immunity via the Copyright Remedy Clarification Act in providing remedies for authors of original expression whose federal copyrights are infringed by states.

Issue Restated in Opposition: The Copyright Remedy Clarification Act purports to abrogate the states’ sovereign immunity for alleged violations of federal copyright law. Did the Court of Appeals correctly hold that the Copyright Remedy Act’s abrogation of state sovereign immunity was invalid?

The case has a few interesting parts.  First off, the underlying issue stems from the discovery of the Blackbeard’s Pirate Ship Queen Anne’s Revenge off the North Carolina Shore where it sank in 1718. Intersal found the wreckage and hired Allen to document the salvage operation.  Allen registered the copyrighted works. Later, the State of North Carolina uploaded the videos online without Allen’s permission.  In order to insulate itself from infringement liability, the state passed Blackbeard’s Law,” which purported to place the uploaded videos in the public domain. (It’s not piracy if legal).

Allen then sued the State for copyright infringement — naming various individuals in their official elected capacity, including ROY A. COOPER, III, as Governor of North Carolina. The question in the case – is whether the State can be sued for copyright infringement.

On one hand is the U.S. Constitution — 11th Amendment to the U.S. Constitution seems quite clear – the Federal Courts have no power over “any suit … against one of the United States” brought by “citizens of another State.”

The Judicial power of the United States shall not be construed to extend to any suit in law or equity, commenced or prosecuted against one of the United States by Citizens of another State, or by Citizens or Subjects of any Foreign State.

At the same time, Congress attempted to expressly “abrogate” this immunity in the Copyright Remedy Clarification Act with the following language:

Any State, any instrumentality of a State, and any officer or employee of a State or instrumentality of a State acting in his or her official capacity, shall not be immune, under the Eleventh Amendment of the Constitution of the United States or under any other doctrine of sovereign immunity, from suit in Federal court by any person . . . for a violation of any of the exclusive rights of a copyright owner provided by [federal copyright law].

Here the statute is clear in its attempt to contravene the 11th Amendment. The only problem through is that statutes are ordinarily subject to the U.S. Constitution, not vice-versa.  The reality though is more complicated – at times the courts have permitted suits against states and have allowed Congress to abrogate state sovereign immunity by statute.

The basic test was spelled out in Seminole Tribe v. Fla., 517 U.S. 44 (1996):

Was the Act in question passed pursuant to a constitutional provision granting Congress the power to abrogate?

In its decision here, the 4th Circuit held that, although Congress does have power to create a copyright regime, it does not have power to abrogate state sovereign immunity for copyright infringement.  I’ll say that there is a good chance that the court will side with Allen against the State — holding that Congress has power to abrogate here because of the need for a “carefully crafted copyright regime.”

48 thoughts on “When Congress Cancelled State Immunity for Copyright Infringement, Did it Violate the U.S. Constitution?

  1. 9

    The Fourth Circuit in the decision below found the issue controlled by Florida Prepaid v. College Savings Bank, 527 U.S. 627 (1999), which held that Congress could not by statute abrogate a state’s 11th Amendment immunity against patent suits based on the powers granted to Congress under the “patent clause” of Article I or the Commerce Clause. The copyright clause is in the exact same part of Article I as patents (Article I, Section 8, Clause 2), so as “Bored Lawyer” notes and the Fourth Circuit found, there isn’t a principled legal basis to distinguish copyrights from patents for purposes of 11th Amendment immunity.

    But the policy implications are vastly different. It’s one thing to say that a state is immune from patent suits, but patents are a tiny niche in terms of intellectual property when compared to copyrights. The number of people who hold copyrights is orders of magnitude greater, as essentially every piece of information you see, hear, or consume digitally or in paper form is protected by federal copyrights. In the end, will the Supreme Court really say that a state could hold free, round-the-clock screenings of Avengers: Endgame, hand out free copies of the latest Harry Potter book, set up its own free digital music streaming service for state employees, or install free copies of Microsoft Word (or any other software) on every single state-owned computer? I think the practical implications of upholding state immunity could will weigh heavily on the issue.

    But if the Court does uphold 11th Amendment immunity, it will probably be short lived. They’ll likely give Congress a road map, much the way the Fourth Circuit did, to properly abrogate state sovereign immunity through statute. Congress could craft a new statute that abrogates sovereign immunity by allowing copyright owners to sue, based on the theory that states cannot deprive copyright owners of property without due process under the 14th Amendment. That would require that the statute explicitly rely on Section 5 of the 14th Amendment (instead of Article I) to abrogate sovereign immunity, and they’d have to make the abrogation narrower, such as in cases of intentional or reckless infringement and limit remedies to actual damages or lost profits.

    1. 9.1

      [W]ill the Supreme Court really say that a state could hold free, round-the-clock screenings of Avengers: Endgame, hand out free copies of the latest Harry Potter book, set up its own free digital music streaming service for state employees, or install free copies of Microsoft Word (or any other software) on every single state-owned computer?

      Bored Lawyer’s #8 already answered this objection—XI amendment immunity does not preclude suit for purely injunctive relief.

      1. 9.1.1

        This is not always as easy as it sounds (as the Federal Circuit’s cases on 11th Amendment immunity make clear) since you cannot actually name or enjoin the state, only the specific officers involved. And obviously this does nothing to remedy any past infringement.

    2. 9.2

      Not sure that I am reading your post as you intend, LR,

      Are you saying that “policy considerations” trump Constitutional control and whether or not a mere Act of Congress can change or amend the Constitution?

      What pathway provides by mere Act of Congress the type of thing that you suggest? What is the “as the Fourth Circuit did” thing? Last I noticed, changing the Constitution requires just a bit more than a mere Act.

      And these policy considerations that you implicate, are being wielded by the courts as they decide?

      1. 9.2.1

        This is well-established constitutional law, anon. I’ll spell it out, as the Fourth Circuit did in the decision below.

        1) Section 5 of the 14th Amendment says, Congress can enact legislation to enforce the provisions of that amendment. The 14th Amendment is one of the amendments at the close of the Civil War, and among other things, it says that a state cannot deprive someone of life, liberty, property, without due process of law.

        2) Congress has enacted lots of civil rights legislation under Section 5 of the 14th Amendment, authorizing states to be sued in federal court for violations of federal rights protected by the 14th Amendment.

        3) The Supreme Court has long held that the states, in enacting the 14th Amendment, waived a portion of their 11th Amendment sovereign immunity, i.e., for any lawsuits authorized by an act of Congress acting under its Section 5 authority.

        4) Thus, Congress can enact a statute authorizing suits in federal court so long as the suit involves a violation of a right protected under the 14th Amendment, and Congress was reasonably clear in its intention to abrogate 11th Amendment immunity under Section 5.

        So the path is there, Congress could enact a new statute stating that a patent holder, copyright holder, etc., can bring a suit against a state for infringement, based on the deprivation of property rights, takings, etc., prohibited by the 14th Amendment. Congress actually tried this route on the patent front after the Florida Prepaid decision, in the early 2000s, but those bills never really get out of committee.

        As far as policy considerations, anon, don’t be naive by thinking the Supreme Court applies the law in some kind of hermetically sealed vacuum, without regard to the practical or policy consequences of its decisions. (The legal landscape is littered with Supreme Court cases showing just the opposite.) There’s no question that the Supreme Court will take the practical consequences of this decision in mind, even if it doesn’t explicitly refer to those concerns in its reasoning.

        1. 9.2.1.1

          Ah, thanks – the path is in an already provided amendment as opposed to merely a “general” Act of Congress.

          I was not getting that from your first post.

          Your clarification is appreciated.

        2. 9.2.1.2

          As for “policy,” I suggest that you realize that I am talking about the untoward OVER policy as reflected in a “legislating from the bench” aspect, and NOT whether in appropriate circumstances the Court relies on its own policy desires.

          There is a HUGE difference.

        3. 9.2.1.3

          There’s no question that the Supreme Court will take the practical consequences of this decision in mind,

          You are kidding, right?

          Patent law is littered with the opposite – cases in which the Supreme Court does not give a rip at all about ANY practical consequences.

          That is precisely WHY the application of the Kavanaugh Scissors is a viable alternative to the MESS of the Gordian Knot created by the Court with patent eligibility of the statute of 35 USC 101.

          1. 9.2.1.3.1

            News flash, Bildo: the entitled feefees of bottom feeders like you are not paramount in the Supreme Courts mind.

            1. 9.2.1.3.1.1

              Your “newsflash” is nothing but dust kicking and has zero connection with the discussion at hand.

              As usual, your mindless snipe means nothing to anyone.

              Maybe instead of focusing so much of your energy on wanting to Tr011, you actually get up to speed on the topic at hand and add something cogent?

  2. 8

    It is important to remember in every sovereign immunity case that there is one big exception. Under Ex Parte Young, the officers of a state are still subject to injunctive relief. So the state could still be sued to obtain injunctive relief, to the extent that has any value to the copyright owner. (Since there is no possibility of monetary relief, it should be easy to show that there is no adequate monetary remedy for the infringement. )

    1. 8.1

      Apologies for the late “add,” but I am not sure that merely “lack of adequate monetary remedy” is sufficient to obtain the “harsh” remedy of injunctive relief.

      The courts have certainly shied away from such (including, especially, in circumstances for which injunctive relief is the form of relief most closely aligned with the nature of the transgressed right, and is easily the best manner of making the transgressed whole).

      Yes, that “shied away” area is the red-headed step child of patents.

  3. 7

    DC: at times the courts have permitted suits against states and have allowed Congress to abrogate state sovereign immunity by statute.The basic test was spelled out in Seminole Tribe v. Fla., 517 U.S. 44 (1996): Was the Act in question passed pursuant to a constitutional provision granting Congress the power to abrogate?

    Doesn’t seem like it to me, as long as we accept the Supreme Court’s interpretation of the 11th Amendment. This “Copyright Remedy Clarification Act” seems to be unconstitutional for the same reason that the ridiculous “Religious Freedom Restoration Act” is unconstitutional. Congress can’t pass a statute that conflicts with the Constitution (specifically, the Constitution as interpreted by the Supreme Court) unless the Supreme Court decides to interpret that statute accordingly (i.e., so that it accords with the Constitution and/or the Supreme Court’s interpretation of the Constitution).

    That said, the most straightforward solution is to recognize that the state here has waived its immunity, assuming that it owns copyrights and enforces them against others. The second solution, of course, is to tell Allen to find someone else to sue (e.g., private entities who are distributing the video) or to find a different theory (contract violation, perhaps?).

    1. 7.1

      the State of North Carolina uploaded the videos online without Allen’s permission. In order to insulate itself from infringement liability, the state passed Blackbeard’s Law,” which purported to place the uploaded videos in the public domain. (It’s not piracy if legal).

      Imagine if UCLA did this with all of Disney’s movies. Would this have gotten to the Supreme Court?

      I am curious about the background facts here. Did Allen need the State’s permission to obtain the right to dive/explore? and what were the conditions placed upon that right (if any)?

      1. 7.1.1

        I imagine that the expedition was in international waters (so no need or presence of conflating contractual issues). Further, the transgression really did not have to do with the salvage efforts (the State uploading a registered copyright video of the person dressing up as BlackBeard and dancing a jig would raise the same issues here.

    2. 7.2

      Induced waiver is absolutely NOT the most straightforward path here.

      That’s just a bizarre statement. I “get” what Ends you want to have – but you provide a mere conclusion as the vehicle for your Means – untethered to any reasoning whatsoever.

      1. 7.2.1

        Induced waiver is absolutely NOT the most straightforward path here.

        Not sure what you mean by “induced” waiver in this context. I’m suggesting that if the state has enforced its rights in some copyrightable work and sought damages in Federal Court for infringement, then it has waived its immunity under the 11th. Seems perfectly fair and reasonable, and it’s also straightforward. I’m fine with prospective enforcement of this doctrine, by the way. Each state is free to decide whether it wants skin in the Federal IP rights game or not.

        1. 7.2.1.1

          Not sure what you mean by “induced” waiver in this context.

          Conditioning waiver of one right in order to have another – lacking an affirmative and independent choice of waiver in any particular setting (as would befit a Sovereign).

          This is not a waiver quid pro quo as to a singular item being placed in the court system and then allowing that singular item to be questioned as to its validity as a natural defense under the law, but rather, this is to the notion that ALL of an entity’s holdings become “open game” because the entity wishes to enforce a particular portion of its holdings.

          And even in that more limited sense, a Sovereign is NOT a normal person for which the type of waiver quid pro quo may apply. Sovereign is over and above the “common approach,” and it would be a mistake to forget that aspect of the equation.

          This is a point that Greg has actually discussed in a fair amount of detail.

          1. 7.2.1.1.1

            This is a point that Greg has actually discussed in a fair amount of detail.

            LOL That’s nice. Good for Greg! I’m so happy for him.

            the notion that ALL of an entity’s holdings become “open game” because the entity wishes to enforce a particular portion of its holdings.

            As I said: that’s a perfectly fair and reasonable notion and (just as importantly) there’s nothing remotely unconstitutional about it. Can you show me where the Constitution prohibits that kind of perfectly fair and reasonable waiver? No, you can’t show me where it prohibits that kind of perfectly fair and reasonable waiver because (predictably) it simply does not do that.

            Remember that this “immunity” we’re talking about is not an absolute immunity. That’s already established. If a State wishes to “merely” enjoin a defendant from, e.g., infringing a patent or a copyright, that is up to the State and the State’s immunity from a damages suit would not be waived. But if the State seeks damages under the copyright or patent act, then it seems perfectly fair and reasonable to conclude that the State has waived its immunity from others seeking the same result as against the State. At least, that’s a perfectly fair and reasonable result.

            And, hey, if the States really really really don’t like this perfectly fair and reasonable result, all they have to do is amend the Constitution.

            1. 7.2.1.1.1.1

              What you label as “perfectly fair and reasonable” simply is inapposite to the concept of Sovereign Immunity. As I already indicated (and provided credit to Greg), Sovereign Immunity exists OUTSIDE OF what may be deemed “perfectly fair and reasonable” for ordinary people.

              That’s rather THE POINT of Sovereign Immunity.

              I suppose in your mind, such does not exist…

              1. 7.2.1.1.1.1.1

                As noted above: fair and reasonable is never far from the minds of most jurists, including the psych0paths on the Supreme Court.

                1. …and your point is…?

                  I really cannot tell if you are trying to make a point here, or are just venting your feelings in some ambiguous manner.

                  You may want to reflect that your “attack” can be applied to members of the Court that veer either Left or Right…

  4. 6

    Yes. Avast ye mateys!

  5. 5

    With respect to Rule of Law, this:

    The only problem through is that statutes are ordinarily subject to the U.S. Constitution, not vice-versa.

    may well be key.

    We have a process for amending or changing the Constitution and that process is explicitly different than the mere passage of an Act of Congress.

    The Rule of Law demands that this order be maintained.

    Note that just because a court may have done things differently, does not mean that the court has acted correctly (the notion of ‘complicated’ somewhat obscured the fact that courts make mistakes).

    In fact, a prime ethical duty of attorneys is to put courts on notice when they have made mistakes (and not to blindly accept them, for example, in thinking that the Supreme Court must be Supreme above the Constitution).

  6. 4

    I thought this issue had already been settled for patent cases. Am I missing something?

    The copyright owner will likely lose here — the SCOTUS has generally affirmed sovereign immunity.

    The interesting thing, I think, is whether Congress could condition IP ownership or enforcement (patents or copyrights) on waiver of sovereign immunity. Many state institutions, especially universities, have an extensive patent portfolio which they license and enforce, but still invoke sovereign immunity when sued for infringement. What if one were conditioned on the other — you want to own and enforce patents against others, you have to waive your immunity against charges of infringement. Would that pass Constitutional muster?

      1. 4.1.1

        Florida Prepaid v. College Savings Bank, 527 U.S. 627, 640 (1999) was the case I was thinking of. Thank you Greg.

        Professor, why does that case not settle this?

        1. 4.1.1.1

          [W]hy does [Florida Prepaid] not settle this?

          Because the two cases are so distinct. As Prof. Crouch noted, the Copyright Remedy Clarification Act explicitly provides that

          Any State… shall not be immune, under the Eleventh Amendment of the Constitution of the United States or under any other doctrine of sovereign immunity, from suit in Federal court by any person… for a violation of any of the exclusive rights of a copyright owner…

          By contrast, there was no provision of U.S. patent law at stake in Florida Prepaid explicitly providing that Florida could not invoke XI amendment immunity. In other words, the question at stake in this case is not merely “can a state escape liability for IP infringment by invoking sovereign immunity?”, which was the matter decided in Florida Prepaid. Rather, the question at stake here is “can Congress cut off a state’s right to invoke sovereign immunity, so as to subject that state to IP infringement liability.” Congress has never tried to do that in the patent context, but it has done so here in the copyright context. Therefore, the issue at stake here was not really at stake (and therefore not decided) by in Florida Prepaid.

          1. 4.1.1.1.1

            The lack of the provision was meaningless in the Tribal Sovereign Immunity Case.

            Your point does not reach.

          2. 4.1.1.1.2

            Greg:

            Florida Prepaid starts out with the following sentence:

            In 1992, Congress amended the patent laws and expressly abrogated the States’ sovereign immunity from claims of patent infringement.

            A later part of that opinion states:

            Indeed, Congress’ intent to abrogate could not have been any clearer. See 35 U. S. C. § 296(a) (“Any State … shall not be immune, under the eleventh amendment of the Constitution of the United States or under any other doctrine of sovereign immunity, from suit in Federal court … for infringement of a patent”).

            The Court then went on to hold that this express abrogation lacked Constitutional authority.

            So I don’t see either how the issue is not settled as to patent law nor how the same does not apply to copyright claims.

            1. 4.1.1.1.2.1

              Goodness, you are right and I am wrong. It has evidently been too long since I read Florida Prepaid. I had forgotten that the unconstitutional language there tracked the same as the putatively unconstitutional language here.

              Seems that you are right. This should be a short per curiam opinion unless the Court wants to really throw out their earlier precedent.

    1. 4.2

      I agree with Prof. Crouch.

      If anything, the recent case denting Sovereign Immunity in the form of Tribal Sovereign Immunity holds against the (admittedly different) State Sovereign Immunity — in that the holding was based NOT on any notion of immunity, but rather on the elements to breach immunity. Those same elements are in play whether the immunity at point is Tribal or State.

    2. 4.3

      I thought this issue had already been settled for patent cases… The interesting thing… is whether Congress could condition IP ownership or enforcement (patents or copyrights) on waiver of sovereign immunity.

      You are quite right that states definitely do enjoy sovereign immunity from patent suits. Florida Prepaid v. College Savings Bank, 527 U.S. 627, 640 (1999). Incidentally, the same case also answered your second question—Congress cannot make waiver of sovereign immunity into a precondition for patent applications, because that would violate the unconstitutional conditions doctrine. Id. at 687.

      Of course, Florida Prepaid is distinguished from this case in the statutory language.

    3. 4.4

      Bored: The interesting thing, I think, is whether Congress could condition IP ownership or enforcement (patents or copyrights) on waiver of sovereign immunity. Many state institutions, especially universities, have an extensive patent portfolio which they license and enforce, but still invoke sovereign immunity when sued for infringement. What if one were conditioned on the other — you want to own and enforce patents against others, you have to waive your immunity against charges of infringement. Would that pass Constitutional muster?

      The issue boils down to whether 11th amendment immunity is waivable. I don’t see why it shouldn’t be (it’s not like some kind of “natural” or “fundamental” right), in which case Congress wouldn’t need to do anything. The Supreme Court could simply decide that it’s waivable and fashion a reasonable test for determining when immunity is waived.

      Fyi, this subject is mostly boring to me, too. The most interesting thing about it, I think, is that the issue of IP suits and state immunity under the 11th didn’t really “catch fire” until fairly recently (1996!). Anyone care to guess why that is (or argue with the premise)?

      1. 4.4.1

        Bayh-Dole…?

        1. 4.4.1.1

          I actually hadn’t thought of Bayh-Dole. How does that figure in?

          I was thinking it had more to do with rights holders engaging in more extensive monetization schemes than before.

          1. 4.4.1.1.1

            Bath-Dole unleashed the ‘monetization’ efforts of a large number of State schools – perhaps the single largest “player” related to this topic.

            By the way, you really should stop thinking of “monetization” as some type of bad thing – THAT is the aim of your supposed client’s, and the disgust that effuses from your writings is one reason why I note the extreme cognitive dissonance that you suffer from.

            1. 4.4.1.1.1.1

              you really should stop thinking of “monetization” as some type of bad thing

              Intrinsically, it’s not a bad thing.

              It is often a bad thing when it involves cr @p patents wielded by bad actors, however. And that’s something that happens quite often. You haven’t noticed?

              State schools – perhaps the single largest “player” related to this topic.

              The topic is sueing States for copyright or patent infringement. No idea what you’re talking about here. But go ahead and connect the dots, unless that’s too difficult for you. Try using complete sentences and make your logical assertions clear to everyone. Good luck with that.

              1. 4.4.1.1.1.1.1

                Your feelings (just what and who is “bad”) are noted.

    4. 4.5

      Bored: The interesting thing, I think, is whether Congress could condition IP ownership or enforcement (patents or copyrights) on waiver of sovereign immunity.

      Or the Supremes could decide that 11th immunity is waivable and when that waiver has occurred, in which Congress doesn’t need to do anything.

  7. 3

    Just logically, because federal copyright laws enacted under Article 1, Section 8 of the Constitution as originally established and the 11th Amendment subsequently amended the Constitution, the authors of the 11th Amendment would presumably know that they were giving states immunity in this manner to any Federal copyright law.

    1. 3.1

      OSitA,

      And just as logically (see LR’s clarifying post above), the authors of (and the States ratifying) the 14th Amendment would presumably know that some “clawback” was going on.

      Leastwise, that is what I am reading from LR at posts 9 and 9.2.1.

  8. 2

    An applicable concept here may well be “Federal Preemption.”

    The spectrum of Intellectual Property laws carries with them a spectrum of Federal Preemption, from patents (total preemption, as witnessed by there being NO state patents), to shared control (such as trademarks) to emerging shared control (formerly only State controlled – such as with Trade Secrets).

    1. 2.1

      To this end, it should be unarguable that copyright falls well along the spectrum towards patents, and away from trade secrets.

      For what that is worth.

    2. 2.2

      I agree that the preemption analysis is likely to be relevant. Here though, we need to go a step further because the question is not-only whether Congress acted to preempt, but whether the Constitution authorizes such preemption in the face of a contrary provision also in the Constitution.

      1. 2.2.1

        Not following – ALL questions of Federal Preemption (versus States) are viewed in that light.

        What distinguishing point are you adding to the existing mix?

      2. 2.2.2

        Quite right, which is why Ordinary Squirrel’s argument at #3 above seems to have the right of it. The framers of the XI amendment knew that copyright violation was a cause of action, and yet they wrote the scope of immunity so broadly as to preclude (inter alia) copyright infringement suits against states. That conveys that the XI amendment has sapped the Congress of its power to leave states open to copyright infringement charges.

  9. 1

    Very interesting!

    If so willing, the likes of Malcolm just might learn some Constitutional Law principles here.

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