By Alexa Sussmane.

Joseph Nicholls, “Capt. Teach alias Black-Beard” (1736), print engraved by J. Basire and reproduced in D. Defoe, A General History of the Lives and Adventures of the Most Famous Highwaymen, Murderers, Street-Robbers, &c. To which is added, a genuine account of the voyages and plunders of the most notorious pyrates (1736), p. 203 (public domain). Source: John Carter Brown Archive of Early American Images.

Can an individual sue a state for copyright infringement? This is the question answered by the United States Supreme Court on March 23, 2020, in the case of Allen et al. v. Cooper, Governor of North Carolina.[1]

Facts

To use the words of Justice Elena Kagan writing for the majority of the Supreme Court, the case concerns a “modern form of piracy,” both literal and figurative, the limits of congressional authority, and one of the most notorious figures in maritime history. In 1718, the Queen Anne’s Revenge ran aground off the coast of what is now Beaufort, North Carolina.[2] This infamous ship was briefly the flagship of the notorious pirate, Blackbeard (given name Edward Teach).[3] Blackbeard’s legend continues to loom large in the American consciousness as emblematic of the romantic idea of 18th century Caribbean piracy. During his lifetime, Teach fostered an image of himself as a larger than life figure, taking care to spread rumors of his ruthlessness, hidden gold and even placing lit matches in his beard in order to present an unearthly specter to those who he encountered.[4] Despite the public interest in Blackbeard, very little is known about Edward Teach himself. Historians are not even certain of his place or date of birth (the story of his demise in battle is far better documented).[5]

Due in part to Blackbeard’s mystique, the discovery of the Queen Anne’s Revenge in 1996 by Intersal, Inc., a marine salvage company, was greeted with much excitement. As it was found off the coast of North Carolina, the wreck belonged to the state of North Carolina under federal and state law.[6] The state then contracted with Intersal, Inc. under N. C. Gen. Stat. Ann. §121-25 (2019) to raise the ship. In turn, Intersal, Inc. contracted with photographer Frederick Allen to chronicle the recovery effort. Allen spent over a decade documenting the salvage effort, filing for federal copyrights over the resulting photographs and videos with the United States Copyright Office.[7] As the undisputed owner to the copyrights over the photographs and videos, he took of the Queen Anne’s Revenge, Allen, as an independent contractor, had the exclusive right to reproduce[8] and display[9] his work.

In 2013, Allen alleged that the state of North Carolina used his footage and photographs without his permission on its website, violating his exclusive rights. The parties almost immediately agreed to a settlement of $15,000 for the use of his work on the state’s website.[10] However, shortly thereafter, as Allen alleged in his complaint filed in the District Court for the Eastern District of North Carolina,[11] a representative of the state of North Carolina posted five additional videos on its website and the state failed to admit any wrongdoing.[12]

Allen based this claim against North Carolina on the Copyright Remedy Classification Act of 1990 (“CRCA”) which amends the definition of “anyone” under 17 USC §501(a), covering copyright law. Section 501(a) states that “Anyone [emphasis added] who violates any of the exclusive rights of the copyright owner…is an infringer of the copyright or right of the author, as the case may be.”[13] Under the CRCA “the term ‘anyone’ includes 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. Any State, and any such instrumentality, officer, or employee, shall be subject to the provisions of this title in the same manner and to the same extent as any nongovernmental entity.”[14] As Allen argued, this provision should allow private parties to bring suit against state actors.

Question of Law: Who is “Anyone”?

This appears to be a clear case of copyright infringement but the difficulty with this case is that the suit was brought against the State of North Carolina which, as a state, has sovereign immunity. As Justice Kagan explained in this opinion “In our constitutional scheme, a federal court generally may not hear a suit brought by any person against a nonconsenting State. That bar is nowhere explicitly set out in the Constitution. The text of the Eleventh Amendment (the single most relevant provision) applies only if the plaintiff is not a citizen of the defendant State. But this Court has long understood that Amendment to ‘stand not so much for what it says’ as for the broader ‘presupposition of our constitutional structure which it confirms.’”[15] As such, it has been established that state governments have sovereign immunity and cannot be sued without their consent.

The court relied on a two-part test which was laid out in Seminole Tribe of Fla. v. Florida,[16] a suit concerning the Indian Gaming Regulatory Act,[17] to determine if the United States Congress had waived state’s right to sovereign immunity:

  • First, whether Congress has “unequivocally expressed its intent to abrogate the immunity;”
  • Second, whether Congress has acted “pursuant to a valid exercise of power.”[18]

Allen argued that the general prohibition of suits against sovereign states is superseded by Congress’s clear intent to allow suits to be brought against states who infringe upon the copyright of private individuals, which should override North Carolina’s sovereign immunity. As Justice Kagan wrote on behalf of the court, “[i]n general, a federal court may not hear a suit brought by any person against a nonconsenting State. But such suits are permitted if Congress has enacted “unequivocal statutory language” abrogating the States’ immunity from suit […] and some constitutional provision allows Congress to have thus encroached on the States’ sovereignty. Congress used clear language to abrogate the States’ immunity from copyright infringement suits in the CRCA.”[19]

As Congress’s clearly expressed intent to supersede South Carolina’s sovereign immunity, the question became whether they had the authority to do so. Allen presented two arguments for why Congress had such authority.

  • First, the plaintiff argued that the Intellectual Property Clause of the Constitution provides Congress with such power “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.”[20] This clause has been used as the basis for federal regulation of copyright and patent law. As such, the plaintiff argues, Congress with the authority to supersede state sovereign immunity for suits involving copyright or patent claims. In rejecting this interpretation, the court relied on the patent case of Florida Prepaid v. College Savings Bank[21] which considered similar questions to Allen v. Cooper. The Court asserted that Allen’s “theory was rejected in Florida Prepaid. That case considered the constitutionality of the Patent Remedy Act, which, like the CRCA, attempted to put “States on the same footing as private parties” in patent infringement lawsuits.”[22] The Court in Allen further dismissed the Plaintiff’s assertions that Florida prepaid is superseded by Central Va. Community College v. Katz[23] where the court “held that Article I’s Bankruptcy Clause enables Congress to subject nonconsenting States to bankruptcy proceedings (there, to recover a preferential transfer).”[24] The Supreme Court declined to extend this exception beyond the bankruptcy clause which Justice Kagan asserted was unique among Congress’s Article 1 powers.[25]
  • Allen’s second argument was that Section 5 of the Fourteenth Amendment, which authorizes Congress to “enforce” the commands of the Due Process Clause, allows Congress to waive state sovereign immunity in cases involving the deprivation of “life, liberty or property.”[26] The court denied this argument, stating that “[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 prohibitions.[27] Congress can permit suits against States for actual violations of the rights guaranteed in Section 1.”[28] Congress’s remedy for copyright violations as established in the CRCA was not considered by the court to be sufficiently tailored to justify a waiver of state sovereign immunity in all copyright cases. Similar to the Patent Remedy Act in Florida Prepaid, the statute’s “indiscriminate scope” was too “out of proportion” to any due process problem.[29] It aimed not to correct such a problem, but to “provide a uniform remedy for patent infringement” writ large.[30] The Patent Remedy Act, in short, did not “enforce” Section 1 of the Fourteenth Amendment—and so was not “appropriate” under Section 5.”[31]

Takeaways

With this decision, the Supreme Court has decreed that state governments are immune from suit for copyright infringement. Further, the court asserted that sovereign immunity will be upheld, even if federal law exists waiving that immunity, absent both clean congressional intent and a narrowly tailored means designed to address a specific concern, characterized by the court as “congruence and proportionality.”[32]

In invalidating the portion of the CRCA which puts states on equal footing with private parties, the Supreme Court has left private copyright holders without a way to hold state governments accountable under copyright law. This means that if, like in Allen v. Cooper, a public entity (such as a state government, university, or agency) chooses to use photographs or other works over which they have no ownership, the holder of the copyrights cannot bring suit unless the state government consents to be sued. While this decision does not involve a breach of contract claims against state governments, it leaves states immune from the consequences of using works without an artist’s permission outside of a business relationship. This only highlights the importance of having a contract that outlines the rights of each party. This also brings the question of whether the original agreement and settlement of $15,000 between the State of North Carolina and the photographer could have been characterized as a tacit agreement to the valid copyright of Allen and consent to being sued for any subsequent infringement of these rights. Of course, if States are not obligated to consent to being sued, it is hard to imagine what would incentivize them to do so in a contract.

Nonetheless, this does not mean that states may never be held responsible. As Justice Kagan stated, this “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.”[33] If Congress were to respond to this decision by writing a more narrowly tailed law addressing copyright infringement remedies, states may be able to be held responsible for copyright infringement.


Disputes over pirate ships are apparently the next big thing. In a separate lawsuit, Intersal, the salvage company who found the Queen Anne’s Revenge and El Salvator, has been seeking to enforce a 1998 contract executed with the North Carolina Department of Natural and Cultural Resources, whereby Intersal waived its rights to any physical treasure found among the wreckage in exchange for exclusive rights to make and market commercial media. Intersal is also claiming that the now-dissolved non-profit organization Friends of Queen Anne’s Revenge has tortuously interfered with the contract. The case is Intersal, Inc. v. Hamilton, No. 115PA18 (N.C. Sup. Nov. 1, 2019).


Endnotes:

  1. Allen v. Cooper, No. 18-877, 589 US _ (2020), 2020 U.S. LEXIS 1909 (Mar. 23, 2020). Here.
  2. Andrew Lawler, Three Centuries After His Beheading, a Kinder, Gentler, Blackbeard Emerges, Smithsonian Magazine, November 13, 2018, here.
  3. Id.
  4. Id.
  5. Id.; Blackbeard, Encyclopedia Britannica (last visited Apr. 10, 2020), https://www.britannica.com/biography/Blackbeard.
  6. See 102 Stat. 433, 43 U. S. C. §2105(c); N. C. Gen. Stat. Ann. §121-22 (2019). (from opinion)
  7. Allen v. Cooper, 2020 U.S. LEXIS 1909, 1, 6 (Mar. 23, 2020).
  8. 17 U.S. Code § 106 (1).
  9. 17 U.S. Code § 106 (5).
  10. Allen, 2020 U.S. LEXIS 1909, at 6-7.
  11. Allen v. Cooper, 244 F. Supp. 3d 525, 2017 U.S. Dist. LEXIS 42159.
  12. Allen, 2020 U.S. LEXIS 1909, at 7.
  13. 17 U.S. Code § 501 (a).
  14. Id.
  15. Id. at 9 (citing Blatchford v. Native Village of Noatak, 501 U. S. 775, 779, 111 S. Ct. 2578, 115 L. Ed. 2d 686 (1991)).
  16. Seminole Tribe v. Fla., 517 U.S. 44, 47 (US 1996).
  17. 25 U.S.C. ch. 29 § 2701 et seq.
  18. Id.
  19. Allen, 2020 U.S. LEXIS 1909, at 2.
  20. U.S. Const. art. I, § 8, cl. 8.
  21. Fla. Prepaid Postsecondary Educ. Expense Bd. v. College Sav. Bank, 527 U.S. 627 (US 1999)
  22. Allen, 2020 U.S. LEXIS 1909, at 2-3.
  23. Central Va. Community College v. Katz, 546 U. S. 356, 359 (US 2006)
  24. Allen, 2020 U.S. LEXIS 1909, at 16.
  25. Id.
  26. U.S. Const. amend. XIV, §5.
  27. Allen, 2020 U.S. LEXIS 1909 (citing City of Boerne v. Flores, 521 U. S. 507, 519, 117 S. Ct. 2157, 138 L. Ed. 2d 624 (1997)).
  28. Allen, 2020 U.S. LEXIS 1909, at 18 (citing Fitzpatrick v. Bitzer, 427 U. S., at 456( US 1976)).
  29. Fla. Prepaid Postsecondary Educ. Expense Bd., 527 U. S., at 646-647, 119 S. Ct. 2199, 144 L. Ed. 2d 575.
  30. Id., at 647, 119 S. Ct. 2199, 144 L. Ed. 2d 575.
  31. Allen, 2020 U.S. LEXIS 1909, at 23.
  32. Id. at 27.
  33. Id.

Suggested readings:

  • C. Friedman, States Shouldn’t Be Copyright Pirates, Creators (Mar. 28, 2020), here.
  • T. Maddrey, Allen v. Cooper: Can States Get Away With Everything Now?, American Society of Media Photographers (Mar. 24, 2020), here.
  • M.U. Wilde-Ramsing, The Queen Anne’s Revenge shipwreck site: A case study for evaluating and managing historic shipwrecks, Maritime Heritage and Modern Ports, p. 165-174 (WittPress, Jan. 2005), here.

About the Author: Alexa Sussmane was a Spring 2020 Intern at the Center for Art Law. She is in the Class of 2021 at the Cardozo School of Law and received her undergraduate degree in history from New York University.