April 21, 2020 Practice Points

U.S. Supreme Court Allows States to be “Digital Blackbeards”—For Now

A recent opinion leaves room for Congress to enact more tailored legislation to address states’ copyright piracy.

By Carl C. Butzer

Edward Teach, better known as Blackbeard, was an eighteenth-century English pirate who roamed Caribbean and Atlantic coastal waters. In June 1718, Blackbeard’s 200-ton flagship, Queen Anne’s Revenge, ran aground off the Bar of Topsail Inlet and sank about a mile from the North Carolina coast. For almost 300 years, Revenge—and its 40 cannons, 400 cannonballs, grenades, muskets, and pistols—laid buried in 6 feet of sand 28 feet below the surface. The 1996 discovery of the wreck led to a ten-year marine salvage operation. During that time, Frederick Allen, a videographer who has “gone nose to nose with 14 foot Great White sharks during underwater expeditions,” created videos and photos of divers’ and archaeologists’ efforts to recover the ship’s guns, anchors, and other artifacts.

In 2015, Allen sued North Carolina for copyright infringement after the North Carolina Department of Natural and Cultural Resources posted several of Allen’s videos on its YouTube channel (e.g., “Raising Blackbeard’s Anchor,” “Blackbeard’s Queen Anne’s Revenge 1718,” and “Raising Blackbeard’s Cannon”), and one of Allen’s still photographs was published in a newsletter about North Carolina’s maritime museums.

North Carolina moved to dismiss the case based on sovereign immunity—that federal courts cannot hear suits brought by individuals against nonconsenting states. Allen invoked the Copyright Remedy Clarification Act of 1990, 17 U.S.C. §511(a) (the CRCA), providing that States “shall not be immune” from claims for copyright infringement. The district court sided with Allen, the Fourth Circuit reversed, and the matter went up to the U.S. Supreme Court.

On March 23, 2020, in a unanimous decision, the Supreme Court held that Congress lacked authority to abrogate the states’ immunity from copyright infringement suits in the CRCA. Allen v. Cooper, No. 18-877, 2020 WL 1325815 (U.S. Mar. 23, 2020). Justice Kagan delivered the opinion of the Court, with Justices Thomas and Breyer writing concurring opinions.

In addressing the contested issue, the Supreme Court considered Allen’s arguments under Article I (which empowers Congress “[t]o 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”) and Section 5 of the Fourteenth Amendment (which gives Congress the power to cut short sovereign immunity when the states “deprive any person of life, liberty, or property, without due process of law”).

As for Congress’ Article I copyright protection powers, the Supreme Court applied the holding in Florida Prepaid Postsecondary Ed. Expense Bd. v. College Savings Bank, 527 U.S. 627 (1999), in which the Court held that a patent statute equivalent to the CRCA lacked a valid constitutional basis. Allen, No. 18-877, 2020 WL 1325815, at *6 (“there is no difference between copyrights and patents under the Clause, nor any material difference between the two statutes’ provisions”). Here, the Court held, the exclusive power to secure a copyright owner’s “‘exclusive Right’ under Article I stops when it runs into sovereign immunity.”

Declaring that “[c]opyrights are a form of property,” the Supreme Court next turned to the argument that the CRCA was authorized under Section 5 of the Fourteenth Amendment. While Section 5 allows Congress to “enact[] reasonably prophylactic legislation” to deter constitutional harm, an “appropriate” abrogation statute under that Section, must be tailored to “remedy or prevent” conduct infringing the Fourteenth Amendment’s substantive prohibitions. Stated plainly, “[t]here must be a congruence and proportionality between the injury to be prevented or remedied and the means adopted to that end.”

Before enacting the CRCA, the then-Register of Copyrights, Ralph Oman, submitted a report about the effects of the Eleventh Amendment (i.e., sovereign immunity) on copyright enforcement. Although the 158-page report concluded that “copyright proprietors have demonstrated they will suffer immediate harm if they are unable to sue infringing states in federal court,” Oman came up with only a dozen possible examples of state infringement – seven court cases and five anecdotes taken from public comments. What’s more, in testifying about the Report, Oman acknowledged that state infringement is “not widespread,” and the States “are all respectful of the copyright law”; and, he rhetorically asked, what State would “want[] to get a reputation as a copyright pirate?” And the bill’s House and Senate sponsors admitted that “there have not been any significant number” of copyright violations by States, and conceded they could not currently see “a big problem.” Even worse, Justice Kagan wrote, “[n]either the Oman Report nor any other part of the legislative record shows concern with whether the States’ copyright infringements (however few and far between) violated the Due Process Clause. Of the 12 infringements listed in the report, only two appear intentional, as they must be to raise a constitutional issue.” Indeed, the CRCA cannot simply serve as a “guard against sloppiness.”

Following this analysis, the Supreme Court found that “the evidence of Fourteenth Amendment injury supporting the CRCA” is “exceedingly slight,” and that the CRCA “aims to ‘provide a uniform remedy’ for statutory infringement, rather than to redress or prevent unconstitutional conduct.” Like the patent statute in Florida Prepaid, the CRCA “expose[s] all States to the hilt—on a record that fail[s] to show they had caused any discernible constitutional harm (or, indeed, much harm at all).” The Court thus ruled that the CRCA is invalid under Section 5 because its “indiscriminate scope” is “out of proportion” to any due process problem.

The Allen decision is noteworthy for two more reasons. First, the case highlights the fundamental disagreement about judicial philosophy involving stare decisis between Justice Thomas and the other Justices. Justice Kagan, joined by Justices Roberts, Sotomayor, Gorsuch, and Kavanaugh, concluded that Florida Prepaid “all but prewrote our decision today”; and that “[t]o reverse a decision, we demand a ‘special justification,’ over and above the belief “that the precedent was wrongly decided.” Justice Breyer, joined by Justice Ginsberg, recognized that his “longstanding view [that Florida Prepaid was wrongly decided] has not carried the day, and that the Court’s decision in Florida Prepaid controls this case.” He therefore concurred in the judgment. Justice Thomas, however, contended that “[i]f our decision in Florida Prepaid were demonstrably erroneous, the Court would be obligated to ‘correct the error, regardless of whether other factors support overruling the precedent.’”

The Allen opinion also leaves room for Congress to enact more tailored legislation to address the States’ copyright piracy. Justice Kagan made clear the decision does not close the door to proportionate legislation aimed to bring “digital Blackbeards” to justice. Justice Thomas, though, challenged this portion of the opinion because, in his view, the Court “should not purport to advise Congress on how it might exercise its legislative authority, nor give [the Court’s] blessing to hypothetical statutes or legislative records not at issue here.”

Carl C. Butzer is a partner with Jackson Walker LLP in Dallas, Texas, and chair of the office's Intellectual Property Group.


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