The US Supreme Court recently issued its decision in Allen v. Cooper, 140 S.Ct. 994 (March 23, 2020) holding that States are immune from copyright infringement lawsuits. Under the 11th Amendment to the US Constitution, generally, States retain their sovereign immunity and Congress has no power to override that immunity. Sovereign immunity means that a state and all of a state’s subsidiary governmental and administrative units cannot be sued unless the state voluntarily waives its immunity. For example, in Michigan, the state has waived its sovereign immunity in some circumstances for acts of negligence committed by government employees. See MCL 691.1407.

Congress DOES have some limited ability to remove the sovereign immunity of states. Indeed, in 1990, Congress attempted just that with respect to copyright infringement by enacting the Copyright Remedy Clarification Act (“CRCA”). 17 U.S.C. § 511(a). However, as noted, the Supreme Court has struck down the statute as unconstitutional. The decision was unanimous, although the nine Justices used different reasoning to reach the unanimous result.

Under the copyright laws, a copyright owner has the exclusive right to use his or her original works of authorship. In general, if a person or entity uses another’s copyright-protected works without permission, then the copyright owner can sue for copyright infringement. Money damages and other types of relief are available. In general, that is what happened in the Allen case.

In 1996, the shipwreck of the Queen Anne’s Revenge was discovered off the North Carolina coast. The shipwreck’s legal owner, under various maritime laws, was the state of North Carolina. North Carolina hired a company to conduct the salvage and recovery operations. That company hired a videographer, Frederick Allen, to video and photograph the underwater efforts. Allen worked for more than a decade and registered copyrights for all of his videos and photographs. At some point, North Carolina published some of Allen’s videos and photos online and, then, Allen sued for copyright infringement. North Carolina defended the suit based on the state sovereign immunity doctrine. In response, Allen argued that the CRCA abolished state sovereign immunity with respect to copyright infringement claims.

The federal trial court agreed with Allen, but the US Court of Appeals for the Fourth Circuit reversed the trial court. The US Supreme Court affirmed the Fourth Circuit’s decision and struck down the CRCA.

That being said, the court DID leave the door open for Congress to enact a more narrowly tailored statute that would allow states to be sued for copyright infringement. The constitutional infirmity with regard to the CRCA was its broadness. To pass constitutional muster, the court stated that there must be a “proportionality” between what Congress is trying to prevent and the remedy chosen. In practice, this means that, likely, Congress has the power to waive a State’s sovereign immunity for only intentional, egregious or maybe reckless infringement of copyrights.

This is important to copyright owners because there are an immense number of state-level agencies, departments and divisions. Just consider the large number of state-operated colleges and universities with various branches and campus locations and tens of thousands of employees. Every employee at every one of those state-operated institutions can now use copyrighted materials with little concern for copyright infringement lawsuits.

If you have questions about protecting your copyrights and other intellectual property, contact the copyright lawyers at Revision Legal at 231-714-0100.

The 11th Amendment Framework and the Seminole Tribe Doctrine

The Eleventh Amendment provides that the judicial power of the United States shall not extend to suits commenced against a state by citizens of another state or of a foreign country. The Supreme Court has interpreted this provision more broadly than its text suggests: in Hans v. Louisiana, 134 U.S. 1 (1890), the Court held that a state is also immune from suit by its own citizens in federal court. The practical result is that a state cannot be sued in federal court unless it voluntarily waives immunity or Congress validly abrogates it.

Congress’s power to abrogate state sovereign immunity is limited. Under the framework established in Seminole Tribe of Florida v. Florida, 517 U.S. 44 (1996), Congress can only abrogate state immunity when acting pursuant to Section 5 of the Fourteenth Amendment—not under Article I powers like the Copyright Clause or the Commerce Clause. The critical question in Allen v. Cooper was whether the Copyright Remedy Clarification Act was validly enacted under Section 5 authority. The Supreme Court unanimously said no.

Why the CRCA Failed Section 5 Scrutiny

Section 5 of the Fourteenth Amendment empowers Congress to enforce the amendment’s guarantees against the states. However, City of Boerne v. Flores, 521 U.S. 507 (1997), established that Section 5 legislation must be congruent and proportional to the pattern of constitutional violations it targets. In Allen v. Cooper, Justice Kagan’s opinion held that the legislative record underlying the CRCA did not document a sufficient pattern of unconstitutional copyright infringement by states to justify the broad abrogation the Act attempted. This reasoning followed the Court’s earlier decision in Florida Prepaid Postsecondary Education Expense Board v. College Savings Bank, 527 U.S. 627 (1999), which struck down a similar patent-remedy statute on the same grounds.

Practical Consequences: What Rights Do Copyright Owners Retain?

The Allen decision does not leave copyright owners entirely without recourse against state infringement. Several options remain viable. First, some states have voluntarily waived copyright immunity, either by statute or through the conduct of litigation. Second, individual state employees can be sued in their official capacities for prospective injunctive relief under Ex parte Young, 209 U.S. 123 (1908), even though they cannot be sued for retrospective money damages. An injunction ordering a state official to take down infringing content and refrain from further infringement may provide meaningful practical relief even without damages.

Third, Congress continues to have authority to enact legislation abrogating state immunity if it builds an adequate legislative record documenting a widespread pattern of unconstitutional state copyright infringement. There have been legislative proposals in Congress to do exactly this with a revised statute, but as of this writing those proposals have not been enacted.

Protecting Copyright in Government Contracting and Licensing

The most practical lesson from Allen v. Cooper is contractual: copyright owners who work with state entities should negotiate specific contract terms addressing the state’s use of copyrighted works. A state that contractually agrees to pay royalties or that contractually acknowledges the copyright owner’s exclusive rights creates different legal and practical leverage. Breach of contract claims survive in state courts, and many states’ sovereign immunity waivers extend to breach of contract suits.

Photographers, videographers, musicians, software developers, and other creative professionals who work with state agencies should ensure their agreements: explicitly identify all works covered; specify the scope of the state’s license; include express limitations on reproduction and distribution beyond the licensed scope; and specify that any dispute arising from the contract will be resolved in state court under state law.

If you have questions about protecting your copyrights, licensing intellectual property, or dealing with government use of your creative work, contact the copyright lawyers at Revision Legal at 231-714-0100.