On March 23, the U.S. Supreme Court issued its first of three anticipated copyright decisions for this term – Allen v. Cooper – in which the Court unanimously held that states are shielded from copyright suits by sovereign immunity. Thus, the plaintiff filmmaker did not prevail in his copyright infringement suit against the state of North Carolina.

In 2015, photographer and filmmaker Frederick Allen and his video company, Nautilus Productions, LLC, sued North Carolina and various state officials, including Gov. Roy Cooper III, over the state’s use of his copyrighted footage of the infamous pirate Blackbeard’s shipwreck of the Queen Anne’s Revenge off the coast of North Carolina in the early 1700’s.

Allen relied on the Copyright Remedy Clarification Act, 17 U.S.C. § 501(a) (CRCA), passed in 1990, that allowed individuals to sue states for copyright violations. The issue before the district court, Fourth Circuit, and ultimately the Supreme Court, was the constitutionality of the CRCA and whether Congress had lawfully abrogated the States’ sovereign immunity under the Eleventh Amendment when it enacted the CRCA. The district court held the CRCA was lawfully enacted, finding that Congress clearly stated its intent to abrogate state sovereign immunity and a proper constitutional basis for that abrogation, but the Fourth Circuit disagreed, and the Supreme Court affirmed this decision, holding that Congress’ power to provide copyright protection did not authorize it to abrogate the States’ Eleventh Amendmnent sovereign immunity from copyright infringement suits in the CRCA.

The Court relied heavily on its 1999 patent decision in Florida Prepaid Postsecondary Ed. Expense Bd. v. College Savings Bank, 527 U.S. 627, which struck down a similar federal statute, the Patent Remedy Act, which sought to allow individuals to sue states for patent infringement.

Justice Elena Kagan, writing the majority opinion, stated that decision “all but prewrote our decision today. That precedent made clear that Article I’s Intellectual Property Clause could not provide the basis for an abrogation of sovereign immunity. And it held that Section 5 of the Fourteenth Amendment could not support an abrogation on a legislative record like the one here. For both those reasons, we affirm the judgment below.” Allen v. Cooper, No. 18-877, 2020 WL 1325815, at *9 (U.S. Mar. 23, 2020).

“Section 5 of the Fourteenth Amendment allows Congress to abrogate the States’ immunity as part of its power ‘to enforce’ the Amendment’s substantive prohibitions,” but “[f]or Congress’s action to fall within its Section 5 authority, ‘[t]here must be a congruence and proportionality between the injury to be prevented or remedied and the means adopted to that end.’” Id. at *2. In applying this test, the Court found Florida Prepaid “critical precedent” because in that case Congress failed to show a pattern of patent infringement by states to justify the Patent Remedy Act. Id. The record of copyright infringement by states was similarly thin and did not justify the CRCA. Kagan explained that “[d]espite undertaking an exhaustive search, [the U.S. Copyright Office] came up with only a dozen possible examples of state infringement … [and] acknowledged that state infringement is ‘not widespread.’” Id. at *8.

In sum, States cannot be sued for federal intellectual property infringement. Florida Prepaid specifically involved patents, and now Allen v. Cooper makes it clear the Florida Prepaid reasoning applies to copyright suits. Together, these two cases most likely can be interpreted to also prohibit trademark suits against States.

Full citation: Allen v. Cooper, 244 F. Supp. 3d 525 (E.D.N.C. 2017), rev’d and remanded, 895 F.3d 337 (4th Cir. 2018), aff’d, No. 18-877, 2020 WL 1325815 (U.S. Mar. 23, 2020).