April 5, 2020
Allen v. Cooper, 589 U.S. ___ (2020) (Kagan, J.).
Response by Jasper L. Tran & Cameron Baker
Geo. Wash. L. Rev. On the Docket (Oct. Term 2019)
Slip Opinion | SCOTUSblog
Allen v. Cooper: States Stay Copyright Pirates
“Who are today’s pirates?”1 States have enjoyed sovereign immunity while plundering the seas of patents and trademarks since 1999, when the Supreme Court decided Florida Prepaid Postsecondary Education Expense Board v. College Savings Bank2 and College Savings Bank v. Florida Prepaid Postsecondary Education Expense Board.3 And on March 23, 2020, the Court held unanimously in Allen v. Cooper4—the first of three copyright cases this Term5—that the same immunity protects states from copyright infringement suits.
The Constitution’s Intellectual Property Clause grants Congress power “[t]o promote the Progress of Science and useful Arts” by granting “exclusive Right[s]” to authors and inventors.6 But this Clause does not explicitly create an exception to states’ sovereign immunity to allow private action against infringing states. To eliminate uncertainty, Congress passed three laws in the early 1990s ensuring that states, like private actors, could be held responsible for violating intellectual property rights: the Patent and Plant Variety Protection Remedy Clarification Act (“Patent Remedy Clarification Act”),7 the Trademark Remedy Clarification Act,8 and the Copyright Remedy Clarification Act.9 Each contained provisions purporting to abrogate state sovereign immunity.
The Patent Remedy Clarification Act shortly ran aground. In Florida Prepaid, a slim (5-4) majority held that states could assert sovereign immunity against claims of patent infringement and that the Patent Remedy Clarification Act’s attempt to abrogate that immunity was invalid.10 Respondent College Savings Bank had advanced three theories for abrogation under: Article I, § 8, cl. 8 (the Intellectual Property Clause, covering patents and copyrights alike); Article I, § 8, cl. 3 (the Interstate Commerce Clause); and the Fourteenth Amendment’s § 1 (the Due Process Clause). The Court began by reiterating that, under the seminal ruling of Seminole Tribe of Florida v. Florida11 (decided three years earlier), Article I “[could not] be used to circumvent the constitutional limitations placed on federal jurisdiction,” limitations acknowledged by the Eleventh Amendment.12 On the Due Process Clause, the Court noted that “the Fourteenth Amendment, by expanding federal power at the expense of state autonomy, had fundamentally altered the balance of state and federal power struck by the Constitution.”13 But in order for Congress to validly invoke and enforce the Due Process Clause, “it must identify conduct transgressing the Fourteenth Amendment’s substantive provisions,” that is, depriving petitioners of life, liberty, or property without due process of law, “and must tailor its legislative scheme to remedying or preventing that conduct.”14 The Court acknowledged that “patents [could be] considered ‘property’ for purposes of [the] analysis,” but found “little support” in the record “for the proposition that Congress sought to remedy a Fourteenth Amendment violation [through the Patent Remedy Clarification Act].”15 As a result, Congress’s abrogation of sovereign immunity from patent infringement claims failed.
The Copyright Remedy Clarification Act faced the same fate in Allen. The facts are straightforward: in 1996, a marine salvage company discovered the remains of Blackbeard’s erstwhile flagship, the Queen Anne’s Revenge, off the coast of North Carolina. The State contracted with the salvage company to lead recovery of the ship’s remains, and the salvagers hired Frederick Allen, a local videographer, to document their efforts. “For over a decade, Allen created videos and photos of the Revenge’s guns, anchors, and other remains” and “registered copyrights in all of those works.”16 When the State published some of his videos without permission, Allen complained and the parties settled. However, the State did so again and subsequently passed Blackbeard’s Law to classify many of his images as public records, which led to Allen’s current suit for copyright infringement and a declaration that Blackbeard’s Law was unconstitutional.17 The State moved to dismiss, citing its sovereign immunity under the Eleventh Amendment.18
Allen argued that the Copyright Remedy Clarification Act provided a valid abrogation of state sovereign immunity. The Supreme Court declared in Central Virginia Community College v. Katz19 that Article I’s Bankruptcy Clause enabled Congress to subject nonconsenting states to bankruptcy proceedings, exempting the Bankruptcy Clause from the rule that abrogation could not be based on Article I.20 Allen contended that Katz augured a new, clause-by-clause approach to Article I abrogation—an approach that supported abrogation under the Intellectual Property Clause. He also argued that, unlike the petitioners in Florida Prepaid, he was the victim of a pattern of infringement that justified the abrogation under the Due Process Clause.
The district court agreed, finding that—although Florida Prepaid barred recourse to Article I—“abusive” copyright infringement provided Congress with the necessary basis to abrogate under the Due Process Clause in the copyright context.21 The Fourth Circuit reversed, reading Florida Prepaid to bar abrogation under the Copyright Remedy Clarification Act as broadly as it did under the nearly-identical Patent Remedy Clarification Act.22 The Supreme Court affirmed, holding that Florida Prepaid foreclosed each of Allen’s arguments.
The Court basically reasoned that “Florida Prepaid all but prewrote” Allen because the arguments Allen offered were virtually identical to those the Court had already rejected therein.23 The Court reiterated that, while ensuring “uniform, surefire”24 protection of intellectual property remained a “proper Article I concern,” the Intellectual Property Clause was not a basis for revoking the State’s immunity.25 The Court also cabined Katz to the bankruptcy context: “[E]verything in Katz is about and limited to the Bankruptcy Clause” and “reflects . . . bankruptcy exceptionalism,” which did not suggest a new approach to abrogation.26 Without a material difference between the provisions of the Patent Remedy Clarification Act and the Copyright Remedy Clarification Act, or a “special justification” for overturning Florida Prepaid,27 Allen’s argument was “doom[ed].”28
Turning to the Due Process Clause, the Court reiterated that Congress must tailor its statutes to “remedy or prevent” conduct infringing upon the Fourteenth Amendment’s substantive prohibitions.29 Florida Prepaid supplied the evidentiary standard for abrogation in the intellectual property context: “intentional [copyright infringement] for which there is no adequate state remedy.”30 Allen argued that a report from the Register of Copyrights about the effects of sovereign immunity on copyright enforcement—which concluded that “copyright proprietors have demonstrated they will suffer immediate harm if they are unable to sue infringing states in federal court”—satisfied that standard.31 The Court disagreed. Looking deeper into the report, it found “only a dozen possible examples of state infringement.”32 Of those dozen, only two appeared to be intentional.33 Consequently, evidence suggesting concern that states were infringing on copyrights in violation of the Due Process Clause was “exceedingly slight”—too slight to support a blanket abrogation of immunity.34
But the Court did extend a sliver of hope to those, like Allen, who wanted to see states, like North Carolina, walk the plank. In light of the Court’s guidance in Allen, Congress should be able to craft the kind of tailored statute that deters states from infringing with abandon and it will now know the kinds of violations that it must cite in the record to support its proclamations.35 Such a statute “can effectively stop States from behaving as copyright pirates” and “bring digital Blackbeards to justice.”36
Allen included two concurrences. Justice Thomas, concurring in part, offered two disagreements: (1) the Court needs no “special justification” to overrule precedent under stare decisis because the Constitution obligates the Court to correct prior errors; and (2) the Court should not advise Congress on “how it might exercise its legislative authority, nor give [its] blessing to hypothetical statutes or legislative records not at issue here.”37 He also observed that “whether copyrights are property within the original meaning of the Fourteenth Amendment’s Due Process Clause remains [an] open” question because the Court’s prior instances of identifying copyrights as a form of property—even for Due Process considerations—were effectively dicta or without substantial analysis.38 Lastly, concurring in the judgment only, Justice Breyer, joined by Justice Ginsburg, noted that they would have dissented on the merits, as they “have consistently maintained” that Seminole Tribe “went astray,” but they recognized that their view of limited state sovereignty “has not carried the day.”39
Allen’s holding was unsurprising, as it is clear that copyright law is more analogous to patent and trademark laws—all of which fall under the umbrella of intellectual property law—than to bankruptcy law.40 While Allen extensively cited its patent counterpart, Florida Prepaid, the Allen majority did not once mention its trademark counterpart, College Savings.41 Interestingly, Florida Prepaid and College Savings came out in the same year, and Florida Prepaid itself looked to, and consistently cited, College Savings.42 In other words, this connection to College Savings may have been lost from Allen due to the nature of stare decisis—which operates as a quick shortcut to avoid having to go back to the slower reasoning by first principles43—and the Allen majority may have signaled that copyright law is closer to patent law than to trademark law.44 However, what was surprising, and perhaps significant as to the durability of the current sovereign immunity jurisprudence, was the shift in the Court’s vote composition from a heated, closely divided 5-4 majority in Florida Prepaid (1999) to unanimity in Allen (2020).
After Allen, state employees, such as teachers who often post and co-opt teaching materials online, continue to benefit from their employers’ sovereign immunity—in addition to the oft-cited fair use defense—from copyright infringement suits. This protection will become increasingly meaningful as society, including many educational institutions, moves towards digital platforms, where copying is just a button’s click away.45 However, Justices Breyer and Alito have warned that “piracy often begets piracy, breeding the destructive habit of taking copyrighted works without paying for them, even where payment is possible,” which not only “ignore[s] the critical role copyright plays in the creation of new works,” but also instills “a false belief that new creation appears by magic without thought or hope of compensation.”46
But not all is lost—Allen appears to not have altered the long-standing Ex Parte Young47 exception to the Eleventh Amendment, which allows a federal court to issue injunctive relief against a state official for continuous violations of federal law.48 Though not addressed in Allen, this very exception has been the basis for another, ongoing copyright infringement suit against Georgia State University by three academic publishers in Cambridge University Press v. Becker.49 That open issue may find its way to the Supreme Court for final resolution in the coming days. However, regardless of whether injunction is still available as a remedy, Allen has eviscerated the economic incentive to sue—and thus, effectively deterred potential plaintiffs from suing—states and their employees for copyright infringement, including the possibility to recoup cost for years of litigation.
Jasper L. Tran and Cameron Baker are associates with Jones Day in San Francisco. All views expressed herein are their own and not necessarily reflective of the Firm or its current or former clients.
1. Jesner v. Arab Bank, PLC, 138 S. Ct. 1386, 1427 (2018) (Sotomayor, J., dissenting) (quoting Kiobel v. Royal Dutch Petroleum Co., 569 U.S. 108, 129 (2013) (Breyer, J., concurring)); see also Gamble v. United States, 139 S. Ct. 1960, 1978 n.15 (2019) (quoting 4 William Blackstone, Commentaries *71 (1769)) (“[T]he crime of piracy . . . is an offence against the universal law of society; a pirate . . . has renounced all the benefits of society and government, and has reduced himself afresh to the savage state of nature, by declaring war against all mankind, all mankind must declare war against him . . . .”). But see Mark Twain, Old Times on the Mississippi, Atlantic, Jan. 1875, https://www.theatlantic.com/magazine/archive/1875/01/old-times-on-the-mississippi-part-i/537825/ (“[N]ow and then we had a hope that if we lived and were good, God would permit us to be pirates.”); Lee A. Casey, Pirate Constitutionalism: An Essay in Self-Government, 8 J.L. & Pol. 477, 488 (1992) (quoting D. Defoe, A General History of the Pyrates 5 (M. Schonhorn ed., 1972) (“‘In an honest Service, says [Bartholomew Roberts], there is thin commons, low Wages and hard Labour; in [piracy], Plenty and Satiety, Pleasure and Ease, Liberty and Power . . . a merry Life and a short one, shall be my Motto.’”).
2. 527 U.S. 627 (1999) (invalidating an amendment to patent laws that abrogates state immunity).
3. 527 U.S. 666 (1999) (holding that the Trademark Remedy Clarification Act, an amendment to the Trademark Act of 1946 (Lanham Act), did not validly abrogate state immunity); see also Kimel v. Florida Bd. of Regents, 528 U.S. 62 (2000) (invalidating the Age Discrimination in Employment Act that abrogates state immunity).
4. No. 18–877 (U.S. Mar. 23, 2020).
5. See also Google LLC v. Oracle America Inc., No. 18-956 (U.S.); Georgia v. Public Resource.Org Inc., No. 18-1150 (U.S.).
6. U.S. Const. art. I, § 8, cl. 8.
7. Pub. L. No. 102-560, 106 Stat. 4230 (1992) (codified at 35 U.S.C. §§ 271(h), 296(a)).
8. Pub. L. No. 102-542, 106 Stat. 3568 (1992) (codified at 15 U.S.C. §§ 1122, 1125(a)).
9. Pub. L. No. 101-553, 104 Stat. 2749 (1990) (codified at 17 U.S.C. §§ 501(a), 511).
10. 527 U.S. at 636, 647.
11. 517 U.S. 44 (1996).
12. Id. at 73 (invalidating a provision of the Indian Gaming Regulatory Act that authorizes a Native American tribe to sue a state in federal court to compel it to negotiate in good faith); see also Florida Prepaid, 527 U.S. at 636 (citing Seminole Tribe, 517 U.S. at 72–73). The Constitution does provide a textual basis for sovereign immunity. See, e.g., William Baude, Sovereign Immunity and the Constitutional Text, 103 Va. L. Rev. 1 (2017).
13. Florida Prepaid, 527 U.S. at 637 (quoting Seminole Tribe, 517 U.S. at 59).
14. Id. at 639 (referring to Congress’s enforcement power under the Fourteenth Amendment’s § 5).
15. See id. at 643, 647 (“The examples of States avoiding liability for patent infringement by pleading sovereign immunity in a federal-court patent action are scarce enough, but any plausible argument that such action on the part of the State deprived patentees of property and left them without a remedy under state law is scarcer still.”).
16. Allen, slip op. at 2.
17. See N.C. Gen. Stat. § 121–25(b) (2015) (providing that photographs and video recordings of shipwrecks in North Carolina’s custody are public records).
18. See The Federalist No. 81, at 549 (Alexander Hamilton) (“[T]he exemption [from suit by individuals is] one of the attributes of sovereignty . . . enjoyed by the government of every state in the union.”); The Federalist No. 39, at 254 (James Madison) (“Each State in ratifying the Constitution, is considered as a sovereign body independent of all others, and only to be bound by its own voluntary act.”); William Baude & Stephen E. Sachs, The Misunderstood Eleventh Amendment, 168 U. Pa. L. Rev. (forthcoming 2020) (manuscript at 4), https://ssrn.com/abstract=3466298 (positing that “the Eleventh Amendment means what it says” and “does not mean what it does not say”); cf. 1 William Blackstone, Commentaries *235 (1765) (“[N]o suit or action can be brought against the king, even in civil matters, because no court can have jurisdiction over him.”).
19. 546 U.S. 356 (2006).
20. See id. at 359.
21. Allen v. Cooper, 244 F. Supp. 3d 525, 535 (E.D.N.C. 2017), rev’d, 895 F.3d 337 (4th Cir. 2018), aff’d, No. 18-877, slip op. (U.S. Mar. 23, 2020).
22. See Allen v. Cooper, 895 F.3d 337, 352 (4th Cir. 2018), aff’d, No. 18-877, slip op. (U.S. Mar. 23, 2020).
23. Allen, slip op. at 16.
24. Id. at 6 (quoting Reply Brief for Petitioners at 10, Allen v. Cooper, No. 18-877 (U.S. filed Oct. 18, 2019)).
25. Id. (quoting Florida Prepaid, 527 U.S. at 648).
26. Id. at 7.
27. Id. at 9 (quoting Halliburton Co. v. Erica P. John Fund, Inc., 573 U.S. 258, 266 (2014)).
28. Id.
29. Id. at 10 (quoting City of Boerne v. Flores, 521 U.S. 507, 519 (1997)).
30. Id. at 12 (citing Florida Prepaid, 527 U.S. at 642–43, 645).
31. Id. at 14 (quoting Copyright Office, Copyright Liability of States and the Eleventh Amendment 103 (1988)).
32. Id.
33. See id. at 15.
34. Id. at 16.
35. See id.
36. Id.
37. Allen, slip op. at 1–2 (Thomas, J., concurring in part and concurring in the judgment).
38. Id. at 2–3 (reasoning that “the parties agree that petitioners’ copyrights are property, and . . . the Fourteenth Amendment does not authorize this statute’s abrogation of state sovereign immunity either way”); see also Rochelle Cooper Dreyfuss, What the Federal Circuit can Learn from the Supreme Court-and Vice Versa, 59 Am. U. L. Rev. 787, 804 (2010) (observing that “the Supreme Court’s own docket is cluttered with cases that arise directly from that Court’s failure to provide clear analytical directions”); accord Guido Calabresi, A Common Law for the Age of Statutes 180–81 (1982); Pierre Schlag, Clerks in the Maze, 91 Mich. L. Rev. 2053, 2054–55 (1993).
39. See Allen, slip op. at 1–2 (Breyer, J., concurring in the judgment); see also Coleman v. Court of Appeals of Maryland, 566 U.S. 30, 46 n.1 (2012) (Ginsburg, J., joined by Breyer, J., dissenting) (“[We] remain of the view that Congress can abrogate state sovereign immunity pursuant to its Article I Commerce Clause power.”).
40. See, e.g., Mark A. Lemley, Property, Intellectual Property, and Free Riding, 83 Tex. L. Rev. 1031, 1034–35 (2005); Matthew Sag, IP Litigation in U.S. District Courts: 1994–2014, 101 Iowa L. Rev. 1065, 1070 & n.15 (2016).
41. Justices Breyer’s and Ginsburg’s concurrence in the judgment cited College Savings once but only in passing. See Allen, slip op. at 2 (Breyer, J., concurring in the judgment).
42. 527 U.S. 627, 631 n.1, 635 (1999); see also id. at 664 n.16 (Stevens, J., dissenting).
43. See Blackstone, supra note 18, at 191 (on reasoning by “first principles, uninfluenced by passion or prejudice, unassailed by corruption, and unawed by violence”); Richard M. Re, Precedent as Permission 3 (Mar. 16, 2020), https://ssrn.com/abstract=3555144 (discussing precedents as shortcuts in analysis); see also Richard A. Posner, How Judges Think 145 (2008) (positing that the federal courts of appeals “are strongly motivated to adhere to precedent, not only because they want to encourage adherence to the precedents they create, but also—and this is more important to most judges— because they want to limit their workloads”).
44. On one hand, the reason could be because Allen relied on the Intellectual Property Clause, which explicitly covers patents and copyrights but not necessarily trademarks. See Trademark Cases, 100 U.S. 82, 94 (1879) (suggesting that important distinctions separated copyright and patent rights, the traditional subject matter of the Intellectual Property Clause, from the quite separate subject matter of trademark law); David L. Lange, The Intellectual Property Clause in Contemporary Trademark Law: An Appreciation of Two Recent Essays and Some Thoughts About Why We Ought to Care, 59 L. & Contemp. Probs. 213, 219 n.25 (1996) (discussing how trademarks have “traditionally been protected under the Commerce Clause”). On the other hand, Allen’s signal does not comport with the separation between the standalone Copyright Office vs. the grouped-together Patent and Trademark Office.
45. See Kevin L. Smith, Teaching Online, Copyright, and Queen Anne’s Revenge, Patently-O (Mar. 30, 2020), https://patentlyo.com/patent/2020/03/teaching-online-copyright-and-queen-annes-revenge.html (noting an additional statutory defense under 17 U.S.C. § 504(c)(2) for employees of non-profit educational institutions); see also 17 U.S.C. § 504(c)(2) (“The court shall remit statutory damages in any case where an infringer believed and had reasonable grounds for believing that his or her use of the copyrighted work was a fair use under [17 U.S.C. §] 107, if the infringer was: (i) an employee or agent of a nonprofit educational institution, library, or archives acting within the scope of his or her employment who, or such institution, library, or archives itself, which infringed by reproducing the work in copies or phonorecords . . . .”). To decide whether a certain use is fair, courts must “look to the nature and objects of the selections made, the quantity and value of the materials used, and the degree in which the use may prejudice the sale, or diminish the profits, or supersede the objects, of the original work.” Folsom v. Marsh, 9 F. Cas. 342, 348 (C.C.D. Mass. 1841) (Story, J.). For example, “a reviewer may fairly cite largely from the original work, if his design be really and truly to use the passages for the purposes of fair and reasonable criticism.” Id. at 344. Conversely, if he “cites the most important parts of the work, with a view, not to criticise, but to supersede the use of the original work, and substitute the review for it, such a use will be deemed in law a piracy.” Id.
46. Golan v. Holder, 565 U.S. 302, 357 (2012) (Breyer, J., joined by Alito, J., dissenting); accord William M. Landes & Richard A. Posner, An Economic Analysis of Copyright Law, 18 J. Leg. Stud. 325, 326 (1989) (“Copyright protection . . . trades off the costs of limiting access to a work against the benefits of providing incentives to create the work in the first place.”); Frank H. Easterbrook, Contract and Copyright, 42 Hous. L. Rev. 953, 964 (2005) (“The goal of intellectual property law . . . is to create incentives to make and disseminate information ex ante.”).
47. 209 U.S. 123 (1908).
48. See Smith, supra note 45. The reason is simple—the Eleventh Amendment jurisprudence, as alluded to in Allen, has no copyright exceptionalism. See also Shyamkrishna Balganesh, Copyright as Market Prospect, 166 U. Pa. L. Rev. 443, 513 (2018) (“showcas[ing] the perils of copyright exceptionalism, the belief that copyright law is best understood as distinct from other areas of law”).
49. No. 1:08-cv-1425, 2012 WL 12951744 (N.D. Ga.); see also Cambridge Univ. Press v. Albert, 906 F.3d 1290, 1296 (11th Cir. 2018) (citing Cambridge Univ. Press v. Patton, 769 F.3d 1232, 1283–84 (11th Cir. 2014) (finding the district court’s fair use analysis in part erroneous and vacating the injunction granted to plaintiffs)).
Recommended Citation
Jasper L. Tran & Cameron Baker, Response, Allen v. Cooper: States Stay Copyright Pirates, Geo. Wash. L. Rev. On the Docket (Apr. 5, 2020), https://www.gwlr.org/allen-v-cooper:-states-stay-copyright-pirates/.
