As background, in the early 1990s, Congress attempted to strip the states of their sovereign immunity in patent and copyright infringement suits by enacting two nearly identical statutes (the copyright one being the CRCA). Shortly after the enactment of these statutes, the Supreme Court held that the patent statute lacked a valid constitutional basis. See Florida Prepaid Postsecondary Ed. Expense Bd. v. College Savings Bank, 527 U. S. 627 (1999). The Supreme Court’s holding on March 23 parallels Florida Prepaid, finding that the copyright statute also cannot strip a state of its sovereign immunity in copyright infringements cases.

The story dates back to 1718 and involves an infamous pirate, Edward Teach (aka Blackbeard). In 1718, Blackbeard’s ship, the Queen Anne’s Revenge, sank off the coast of North Carolina. It was not until 1996, nearly 300 years later, that the shipwreck was discovered by Intersal, a private marine research company. Intersal hired Frederick Allen and his production company, Nautilus Productions, to shoot video and take photographs of the shipwreck and the efforts to salvage it. For nearly a decade, Allen documented this through photographs and videos, registering his works with the U.S. Copyright Office.

In or around 2013, North Carolina began to publish Allen’s works on its website as part of its tourism efforts. Allen complained about the alleged infringement, which resulted in a $15,000 settlement. But that did not end the dispute. Allen objected again after North Carolina subsequently posted five of his videos online and used one of his photos in a newsletter. After North Carolina declined to admit wrongdoing, Allen filed suit in the Eastern District of North Carolina alleging copyright infringement. North Carolina moved to dismiss, asserting state sovereign immunity. Allen fired back, arguing that the CRCA stripped the states’ sovereign immunity. The district court agreed with Allen, finding that “Congress has stated clearly its intent to abrogate sovereign immunity for copyright claims against a state.”  While the district court acknowledged the holding in Florida Prepaid, it held that Section 5 of the Fourteenth Amendment¹ supported its holding.

The Fourth Circuit, on interlocutory appeal, reversed, finding that Congress lacked authority to abrogate state sovereign immunity through the CRCA or via Section 5 of the Fourteenth Amendment, holding that abrogation “must be ‘congruent and proportional’ to the Fourteenth Amendment injury it seeks to remedy.” The Supreme Court granted certiorari to review that decision.

Justice Elena Kagan delivered the opinion, which affirmed the Fourth Circuit’s holding. Kagan explained that federal courts can entertain suits against a nonconsenting state on two conditions: (1) if Congress has enacted “‘unequivocal statutory language’ abrogating the state’s immunity from suit,” and (2) “some constitutional provision must allow Congress to have thus encroached on the states’ sovereignty.”  She acknowledged that although the CRCA “used clear enough language to abrogate the states’ immunity from copyright infringement suits,” Congress did not have the authority under either Article I’s Intellectual Property Clause, or Section 5 of the Fourteenth Amendment to do so.

Allen argued that Article 1, which “promote[s] the Progress of Science and useful Arts, by securing for limited Times to Authors and Investors the exclusive Right to their respective Writings and Discoveries,” provided Congress with the necessary authority to abrogate sovereign immunity from copyright suits. He argued in his briefs that abrogation “is the single best —or maybe […] the only— way for Congress to ‘secur[e]’ a copyright holder’s ‘exclusive Right[s]’ as against a state’s intrusion.” The “problem” with this argument, Kagan explained, is that the “Court has already rejected [this] theory” in Florida Prepaid, and “there is no difference between copyrights and patents under the Intellectual Property Clause, nor any material difference between the two statute’s provisions.” Additionally, although the Fourteenth Amendment “[s]ometimes, no doubt” cares about copyright infringement, the CRCA fails the “congruence and proportionality” test because the law’s “indiscriminate scope is out of proportion to any due process problem,” the Court wrote.

Although Florida Prepaid, “all but prewrote [the Court’s] decision,” Kagan stated that the Court’s opinion should not be read as barring Congress from attempting to pass a new version of the law, perhaps a “tailored statute [to] effectively stop states from behaving as copyright pirates,” she suggested.

1. Section 5 of the Fourteenth Amendment permits Congress to abrogate the states’ immunity as part of its power “to enforce” the Amendment’s substantive prohibitions. City of Boerne v. Flores, 521 U. S. 507, 519.