The U.S. Supreme Court building in Washington, D.C. Photo by Diego Radzinschi

A state cannot be sued for copyright infringement, according to the U.S. Supreme Court's recent ruling in Allen v. Cooper. The opinion held that Congress did not validly abrogate state sovereign immunity when it enacted the Copyright Remedy Clarification Act of 1990.

The dispute in Allen arose out of the state of North Carolina's use of photographer and videographer Frederick Allen's copyrighted photos and videos of the shipwreck of the Queen Anne's Revenge. Originally serving as a French slave ship, Queen Anne's Revenge is better known as briefly serving as the flagship of the famed pirate Blackbeard. The ship sank in 1718 after hitting a sandbar off the coast of Beaufort, North Carolina.

As stated in the Supreme Court opinion, which was published on March 23, "Under federal and state law, the wreck belongs to North Carolina." In 1996, Allen was hired by a state contractor, Intersal Inc., as an underwater photographer. He began photographing and documenting the wreckage and attempts to salvage the remains. Allen continued this project for over a decade and registered copyrights for these works.

Allen discovered that North Carolina had published his videos and still images on its website. In 2013, Allen complained to the state that it lacked the authorization to use his works. Allen and the state negotiated a settlement in which North Carolina agreed to pay Allen for its use. The settlement also laid out the parties' respective rights to the copyrighted works. Shortly thereafter, when Allen learned that the state had used the works again without permission, Allen filed suit in federal court in the Eastern District of North Carolina.

North Carolina moved the district court to dismiss the case and invoked sovereign immunity. Allen responded that the CRCA 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." The district court agreed with Allen, finding that "Congress has stated clearly its intent to abrogate sovereign immunity for copyright claims against a state."

Generally, a federal court may not hear a suit brought against a state without the state's consent. The district court refused to dismiss the case on the basis of sovereign immunity, finding that Congress had the authority to abrogate sovereign immunity for copyright claims against a state and had validly done so by enacting the CRCA. Although 1999's Florida Prepaid Postsecondary Education Expenses Board v. College Savings Bank (a similar case on the Patent Remedy Act) and other precedent precluded Congress from using its Article I powers to abrogate sovereign immunity, the district court found that Florida Prepaid had left "alternative route(s)" to abrogation. The district court reasoned that under Section 5 of the Fourteenth Amendment and given the states' "pattern" of copyright infringement, Congress was free to take away immunity from suit. The district court refused to dismiss the case on the basis of sovereign immunity.

The Fourth Circuit Court of Appeals reversed this decision on interlocutory appeal, ruling in favor of North Carolina and ultimately finding the CRCA invalid.

On certiorari, the Supreme Court affirmed the Fourth Circuit. Justice Elena Kagan, writing for the majority, stated, "To decide whether a law passes muster, this Court has framed a type of means-end test" or "congruence and proportionality test." The court reviewed the legislative history for both the CRCA and the Patent Remedy Act. The court observed that the legislative history for both laws revealed that "most state infringement was innocent or at worst negligent."

Largely echoing its analysis from Florida Prepaid, the court reasoned that given the "identical scope" of the Patent Remedy Act and the CRCA, the CRCA could only be deemed a proportionate remedy where it was based on "materially stronger evidence of infringement, especially of the unconstitutional kind." This was not so. Comparing instances of copyright infringement by states to patent infringement by states, Kagan found that evidence of state infringement of copyrights is lacking.

Without more, the court found that the CRCA's "indiscriminate scope" is unjustified and cannot be used to maintain a suit against a state for copyright infringement.

The court made clear that its holding "need not prevent Congress from passing a valid copyright abrogation law in the future." Indeed, in early February, the Court of Appeals for the Federal Circuit heard similar arguments in Gensetix v. Baylor College of Medicine regarding whether sovereign immunity can preclude a state-patent owner from being involuntarily joined by its licensee in a patent suit against an infringer. Where patent infringement cases against states are more common than copyright cases, as outlined in both Allen and Florida Prepaid, the court is leaving it up to Congress to pass valid legislation to protect IP rights owners from infringement by the state.

For now, though, the Supreme Court has confirmed that the CRCA is not the way to "bring digital Blackbeards to justice."

Erin Ranahan, a partner at Winston & Strawn, represents clients in high-profile matters with precedent-setting results, notably with regard to the Digital Millennium Copyright Act. Chante Westmoreland, an associate attorney at the firm, focuses her practice on intellectual property law, data privacy and technology.