This article is submitted by

Ashwin Sasikumar, Government Law College Mumbai

In the Supreme Court of The United States
Equivalent Citation: Frederick L. Allen v. Roy A. Cooper, III, Governor of North Carolina,589 US (2020)
Appellant: Frederick Allen
Respondent: ROY A. COOPER, III, GOVERNOR OF NORTH CAROLINA
Decided on: 23rd March 2020
Bench: Chief Justice John G. Roberts, Justice Ruth Bader Ginsburg, Justice Clarence Thomas,  Justice Stephen Breyer, Justice Samuel Alito, Justice Sonia Sotomayor, Justice Elena Kagan, Justice Neil Gorsuch, Justice Brett Kavanaugh

Keywords
Sovereign Immunity, Copyright Infringement, Patent Infringement, Copyright Remedy Clarification Act of 1999 (CRCA), Congress.

Background

In a unanimous decision, the U.S. Supreme Court, in the case of Allen V Cooper preserved a states’ right to sovereign immunity from Copyright infringement cases. In doing so, the court dismissed a copyright infringement suit filed by Allen against the State of North Carolina.

Sovereign Immunity is a doctrine derived from the British Law based on the notion that “The King can do no wrong”. As per this doctrine, a government cannot be prosecuted without its consent.  In the present case, Allen sought to challenge Sovereign Immunity in Copyright infringement cases when the State of North Carolina posted 5 of his videos on their state website without his permission. Thus, accusing the state of infringing his copyright. 

In this piece, the author highlights the key observations made by the Supreme Court in the Allen v Cooper ruling and concludes by analyzing the need for reforms in Copyright Law.

Facts

A historic shipwreck was discovered in the year 1996 off the coast of North Carolina by “Interstal Inc” a marine salvage company. As per federal and state law[i], it belonged to the state of North Carolina since it was found off their coast. The state hired “Interstal” to take charge of the recovery activities, who later employed the petitioner Frederick Allen, a photographer, to record the activities. For over a decade the petitioner documented their activities resulting in many photos and videos over which he filed for copyrights with the U.S Copyright Office as an undisputed owner.

A dispute arose between Allen and the State of North Carolina when the State posted 5 of his videos online without his permission. Allen accused the State of infringing his copyrights and brought an action against the State in the Federal District Court of North Carolina. The State denied any wrongdoing claiming Sovereign immunity granted by the “Copyright Remedy Clarification Act of 1999” (CRCA). However, the Court found in favor of Allen. Furthermore, the Court found constitutional validity in abrogation of Sovereign Immunity by Congress in CRCA’s text.

Unsatisfied with the judgment, the State moved to the US Court of Appeals of the Fourth Circuit. The Court of Appeals overturned the lower court’s decision finding that CRCA does not abrogate Sovereign immunity and that Congress lacked the authority to abrogate Sovereign Immunity. This resulted in Allen approaching the Supreme Court.

Issue

Does Congress have the authority to abrogate state sovereign immunity through the CRCA?

Contentiones Raised

The petitioner contended that Congress did have the authority to abrogate a state’s sovereign immunity from copyright infringement lawsuits citing both “Art. I, §8, cl. 8”[ii] (Intellectual Property Clause) and Section 5 of the 14^th Amendment.[iii]

The Intellectual Property Clause, in the interest of promoting arts and science, gives Congress the power to secure for an Author/Inventor, the exclusive right to their works and discoveries for a limited period. Allen argued that this clause provides Congress with the power to abrogate state sovereign immunity, in the interest of protecting an individuals’ copyright against a states’ intrusion. The court however rejected Allen’s argument relying on Florida Prepaid[iv] wherein the court held that Congress cannot use its Art. I[v] power over Copyrights to abrogate State Sovereign immunity.

Section 5 of the 14th Amendment gives Congress the authority to abrogate a States’ Sovereign-immunity as part of its authority “to enforce” the 14^th Amendments’ fundamental prohibitions. However, as per the Court, for an abrogation statute to be proper in law u/s 5 of the 14^th Amendment, it must be attuned to “remedy or prevent” the infringement of the 14th Amendment’s prohibitions. Hence, to decide which law meets the requirements, the Court came up with a means-end test.

The Congruence and Proportionality Test

As per the Congruence & Proportionality test (The Test), for the Congress’ action u/s 5 to be valid, “[t]here must be a congruence and proportionality between the injury to be prevented or remedied and the means adopted to that end.”[vi] So, the Court is required to consider two questions/issues:

1. The constitutional issue faced by Congress, both its nature and the extent of violation of the 14^th Amendment by the State in question
2.  The magnitude of the response Congress chose, to address that particular issue. (How far the Congress went beyond addressing the actual violation at hand)

The above-mentioned test calls for the judiciary to assess the magnitude of the state conduct that violates the 14^th Amendment, and to examine the scope of Congress’s response to that injury.

Judgement

While examining the test and arriving at their decision, the Court heavily relied upon Florida Prepaid.[vii] There, the Court, citing “The House Report”[viii], found that not a single state was divesting any individual of their patented product without due process. Also, the patent infringement suits which did occur were acquitted or in the worst case negligent. Thus, in the absence of any discernable evidence by the opposition contrary to “The House Report”, the Court concluded that the “Patent Remedy Act”[ix], did not “enforce” Section 1 of the 14^thAmendment[x] and hence, was not “appropriate” u/s 5 of 14^th Amendment.[xi]

Owing to the similar scope of Florida Prepaid and the present case, the Court stated that this case can only be decided differently if the CRCA was supported by substantially compelling proof of copyright infringement by States. That is on top of the notion that the precedent was decided incorrectly. However, just like Florida Prepaid, the legislative data concerning the present case hardly include any proof of Copyright infringement by any State. Moreover, the proof of the 14^th Amendment violation supporting the CRCA is negligible. The CRCA thus failed the Court’s “congruence and proportionality” test.

For the following reasons, the court concluded that the law abrogating sovereign immunity in the current case is untenable under section 5 of the 14^th Amendment.[xii]

Conclusion

The abrogation of sovereign immunity may lead to an increase in baseless litigation against the states. However, this must not stop Congress from ensuring an “exclusive right” for authors/inventors. As the Court set out in obiter dicta, this decision need-not preclude Congress from “passing a valid copyright abrogation law in the future”.[xiii]  Thus, Congress must respond to this ruling by drafting legislation, particularly addressing copyright infringement remedies, where a state may be held liable for copyright infringement. In the light of this decision, Senator Thom Tillis (R-North Carolina) and Patrick Leahy (D-Vermont) have written a letter asking the U.S. Copyright Office and the U.S. Patent and Trademark Office to conduct a study “on the extent to which intellectual property owners are suffering infringement at the hands of state government”.[xiv]  Thus, there is hope that Congress will bring in the necessary reforms to Copyright Law.

Reference

[i] 43 U.S. Code § 2105

[ii] U.S Constitution Art. I, §8, cl. 8

[iii] U.S Constitution 14^th Amendment Section 5

[iv] College Savings Bank v. Florida Prepaid Postsecondary Ed. Expense Bd., 527 U.S. 666 (1999)

[v] U.S Constitution Art. I

[vi] City of Boerne v. Flores, 521 U.S. 507 (1997)

[vii] College Savings Bank v. Florida Prepaid Postsecondary Ed. Expense Bd., 527 U.S. 666 (1999)

[viii] “Copyright Liability of States and the Eleventh Amendment, June 1988”

[ix] Patent and Plant Variety Protection Remedy Clarification Act.

[x] U.S Constitution 14^th Amendment Section 1

[xi] U.S Constitution 14^th Amendment Section 5

[xii] U.S Constitution 14^th Amendment Section 5

[xiii] City of Boerne v. Flores, 521 U.S. 507 (1997)

[xiv] U.S Copyright Office, https://www.copyright.gov/policy/state-sovereign-immunity/letter.pdf (last visited June 28, 2021)