Volume 19, Number 6
INTELLECTUAL PROPERTY LAW
STATE IMMUNITY FOR COPYRIGHT VIOLATIONS ON THE HORIZON?
By Kate Thompson
Given the Supreme Court's recent pattern of felling large pieces of federal legislation that abrogate state sovereign immunity, state entities may soon enjoy immunity from copyright infringement as well. The Copyright Remedy Clarification Act (CRCA) of 1990 expressly abrogated state sovereign immunity for copyright infringement. Under recent Supreme Court decisions striking down federal legislation that abrogated state immunity, the Copyright Act appears headed for a similar fate. The Fifth Circuit has already anticipated that conclusion, and its state entities now enjoy immunity from suit for copyright violations.
Eleventh Amendment jurisprudence. The Eleventh Amendment prohibits lawsuits against states in federal courts unless the state either consents to suit or Congress validly abrogates that immunity. In 1996 the Court held that Congress could abrogate state immunity only pursuant to the Fourteenth Amendment, Section 5 enforcement power of Congress. Since 1996, the Supreme Court has consistently narrowed the scope of congressional power to abrogate state immunity under Section 5.
In 1997 the Court, in City of Boerne v. Flores, invalidated the Religious Freedom Restoration Act (RFRA) in its entirety and articulated its approach to Section 5 legislation. Laws enacted by Congress must be narrowly tailored to remedy persistent and pervasive constitutional violations by the states. Using this analysis, the Court proceeded to strike down the RFRA on grounds that it impermissibly expanded the scope of citizens' rights to religious expression and that the statute's provisions were not "proportionate" to or "congruent" with preventing or remedying a pattern of constitutional violations.
The Court also articulated its high standard for evidence of state constitutional violations necessary to justify such legislation. The majority looked to the record before Congress and the judiciary in voting rights cases as the model of an acceptable record of state constitutional violations. The Court concluded that RFRA's legislative record lacked any such "widespread pattern of religious discrimination" and that the RFRA was incongruent with the record of constitutional violations before Congress.
Boerne established the method by which the Court would examine federal legislation that abrogated state immunity: Examine the legislative record supporting the legislation for evidence of constitutional violations by the states, and then compare that record to the remedy enacted in the legislature. The Court determined that because of the remedial and preventive nature of congressional enforcement power under the Fourteenth Amendment, a documented pattern of underly-ing violations of the Fourteenth Amendment by the states must exist before Congress can act.
Using this type of analysis, the Court in Kimel v. Florida Board of Regents held that state entities cannot be sued for violating the Age Discrimination in Employment Act (ADEA). The Court reasoned that because Congress had not identified a sufficient pattern of pervasive age discrimination by the states, the states could not be sued in federal court for violations of the federal Fair Labor Standards Act.
Patent Remedy Clarification Act. The Court followed the same pattern in its 1999 analysis of the Patent Remedy Clarification Act (PRCA). In Florida Prepaid, the Court evaluated whether Congress had identified a pattern of serious, ongoing violations of patent law by the states. After reviewing the legislative record, the Court concluded that the record lacked sufficient evidence. Given "scant support for the predicate unconstitutional conduct that Congress intended to remedy," the Court further concluded that the scope of the act was incongruous. In a 5-4 decision, the Supreme Court invalidated the PRCA. As in Boerne, the Court required that the constitutional deprivations be "widespread and persisting" and concluded that the legislative record on such constitutional violations was insufficient.
The most recent and sweeping ruling in the sovereign immunity area is the Court's decision in Board of Trustees v. Garrett, where it held that states may not be sued for violations of Title 1 of the Americans with Disabilities Act (ADA). The Court concluded that the legislative record lacked the required "pattern of unconstitutional discrimination[.]" As it had done in Boerne, the Court compared the legislative record supporting the ADA with that supporting the 1965 Voting Rights Act. The evidence supporting passage of the Voting Rights Act, in the words of the Court, was replete with "abundant evidence of States' systematic denial of [those] rights." In the 1965 act, Congress documented a "marked pattern of unconstitutional action by the States." In contrast, the recent case determined that the ADA fell far short of the pattern of unconstitutional discrimination on which Section 5 legislation must be based.
In 1990 Congress passed the CRCA, which abrogated the states' Eleventh Amendment immunity to suits in federal court for copyright infringement. Given the Supreme Court's decisions in Florida Prepaid and Garrett, the CRCA likely faces a constitutional challenge on the same grounds-that Congress did not validly abrogate the states' immunity. The Fifth Circuit has already determined that the CRCA does not satisfy constitutional standards and that Congress did not have the authority to abrogate state sovereign immunity in the act. The Chavez court found that the legislative record failed to disclose a pattern of copyright infringement by the states, specifically noting that the history of the CRCA, like that of the PRCA, failed to reflect a history of serious and ongoing copyright violations by the states.
Reviewing the legislative history, the Chavez court noted three specific testimonies in the legislative record. Testimony before the House subcommittee had stated that "states are not going to get involved in wholesale violations of the copyright laws." The bill's sponsor said, "thus far there have not been any significant numbers of wholesale taking of copyright rights by states or state entities." Finally, a copyright office report on the relation between the Eleventh Amendment and the state's copyright liability contained no more than seven documented instances of state copyright infringement enabled by the Eleventh Amendment, and the court found the same deficiency in the Senate record. Accordingly, the court determined that the CRCA, like the PRCA, was an improper exercise of congressional legislative power.
The legislative record. The legislative record compiled by Congress contains at most nine documented instances of actual and direct copyright infringement by a state or state entity. Although the congressional committees working on the bill concluded in reports that "copyright owners have demonstrated that they will suffer immediate harm if they are unable to sue infringing states for damages," the record does not support that conclusion with specific evidence of a pattern of state copyright infringement. The Copyright Office could point to only seven documented cases in which a state asserted the Eleventh Amendment to avoid liability. Testimony and other documentation in the legislative record fall short of the level demanded in Garrett and Florida Prepaid, which require a pattern of constitutional violations.
Based on this standard for the type of legislative record sufficient to illustrate a pattern of constitutional violations by the states, the legislative record supporting the CRCA is likely insufficient and, therefore, likely to fail on the same grounds as Title 1 of the ADA in Garrett.
Given the tenuous constitutionality of the CRCA, intellectual property attorneys must be prepared either to face or to assert an Eleventh Amendment immunity defense in copyright infringement cases involving states or state entities. For those already involved in such litigation, an Eleventh Amendment argument can still be raised as a defense because sovereign immunity is jurisdictional and can be raised at any time or by the court sua sponte. Because Eleventh Amendment immunity may be asserted only by a state or state entity, a key battle in some cases will be whether an entity is sufficiently an arm of the state to be entitled to immunity. Therefore, determination whether an entity is entitled to assert Eleventh Amendment immunity must be an early focus for the practitioner. Also, regardless of Chavez, the CRCA remains good law for the time being. Whether courts outside the Fifth Circuit will follow Chavez remains to be seen. Given recent U.S. Supreme Court jurisprudence on state sovereign immunity, state liability for copyright violations is in doubt.
Kate Thompson is an associate with Gleaves Swearingen Potter & Scott LLP in Eugene, Oregon.
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This article is an abridged and edited version of one that originally appeared on page 9 of IPL Newsletter, Winter 2002 (20:2).