Tag: State Sovereign Immunity

Allen v. Cooper Revisited: Part II – That Damned Eleventh Amendment

(NOTE: This post relies on information presented in Part I.)

In my first post in this series, I tried to summarize (albeit in nearly 3,000 words) the reasons why the states, and arms of the states, may freely infringe intellectual property without fear of being sued for monetary damages. I referred to the Eleventh Amendment as a pain in the neck, but also mentioned that the man usually credited for its existence, Justice James Iredell, is an interesting figure. This is because I like stories about the conceptual dichotomies tugging at one another during the founding period of the United States, especially when those tensions are manifest in a single individual.

As a Justice of the Supreme Court, Iredell wrote the singular, dissenting opinion that resulted in the most acute expression of states’ rights in the Constitution. But he was also a passionate advocate of the federal plan at a time and place when the audacity of those men in Philadelphia, initially tasked with fixing the Articles of Confederation, was a source of considerable irritation among many Americans.

In July of 1788, when some 300 county delegates of the State of North Carolina met in Hillsborough to decide whether to join the ten states that had already ratified the Constitution, Iredell was among the minority of those who favored the plan of the Convention. In fact, most of North Carolina’s representatives were already so sure of their intent to reject the Union, that they moved to vote immediately on the matter and return home. And it was Iredell who rose to make an impassioned plea for a section-by-section debate on the text of the document. Acknowledging his inclination toward adoption, he declared …

“My constituents did me the honor to elect me unanimously, without the least solicitation on my part. They probably chose me because my sentiments were the same with their own. But highly as I value this honor, and much as I confess my ambition prompted me to aspire to it, had I been told that I should not be elected unless I promised to obey their directions, I should have disdained to serve on such dishonorable terms. Sir, I shall vote perfectly independent, and shall certainly avow a change of my present opinion, if I can be convinced it is a wrong one.”

So, after nearly three days of debate as to whether there should be a debate, Mr. David Caldwell rose near the start of Day Four to ask whence the Convention delegates derived the authority (i.e. the arrogance) to begin their preamble with We the people…. Iredell must have been among those who thought to himself, “This is going to be a long bloody meeting,” while patiently listening to Archibald Maclaine (who would later help draft the Bill of Rights) explain that if the Constitution were adopted, it would become North Carolina’s law as well, and thus, the citizens of the state would be represented by the words We the people. I mention this not only because it’s funny, but to emphasize the atmosphere of distrust that existed with regard to the allegedly insidious Constitution.

Throughout the substantive debate on the various articles and clauses, Iredell was, of course, not the only advocate of the federal plan. William Davie, who served as a delegate at Philadelphia, naturally argued the cause of ratification. But it is notable that Iredell, who, in February of 1790, will be nominated by Washington as one of the nation’s first Supreme Court Justices, consistently plays the role of interpreter at Hillsborough. He intermittently defends the principles of a contested paragraph or section, principally by explaining how the delegates who express concern have misread the meaning of the text. In short, Iredell emerges as the jurist in the room.

North Carolina ratified the Constitution on November 21, 1789, making it the twelfth state to join the Union, and, like the straggler Rhode Island, its delegates had principally delayed on the grounds that they wanted a bill of rights added to the general legislature. As many of us were taught in school, there were founders who argued that an affirmative statement of rights was dangerous because it meant that all rights not named were impliedly not protected. Iredell, a member of this latter camp; inveighed against a bill of rights, declaring …

“…when it is evident that the exercise of any power not given up would be a usurpation, it would be not only useless, but dangerous, to enumerate a number of rights which are not intended to be given up; because it would be implying, in the strongest manner, that every right not included in the exception might be impaired by the government without usurpation; and it would be impossible to enumerate every one.”

This was during the fairly heated debate on Article III, establishing the federal judiciary, which stoked the anxieties of many delegates, fearing that certain rights, like trial by jury, were not expressly guaranteed in the federal plan. Although the subject of state immunity from suit was not raised at Hillsborough, the issue of “diversity” was discussed. Article III, Section 2 contains what are known as the Diversity Clauses, which were meant to alleviate fears of “home-court advantage,” where state courts may be prejudiced against suits brought by residents of foreign states. Hence, the need for uniform (i.e. federal) remedies, which Iredell explained thus:

“A man in North Carolina, for instance, if he owed £100 here, and was compellable to pay it in good money, ought to have the means of recovering the same sum, if due to him in Rhode Island, and not merely the nominal sum, at about an eighth or tenth part of its intrinsic value. To obviate such a grievance as this, the Constitution has provided a tribunal to administer equal justice to all.”

If Iredell’s sentiments, which I have barely skimmed here, do not quite sound like a those of a man who would have asserted that Congress, under its Article I powers, could never have the authority to abrogate state immunity, this is because most evidence points to the conclusion that he believed no such thing. In fact, according to Justices Souter and Stevens, in their dissents in Seminole Tribe, Iredell does not even articulate this view in his dissent in Chisolm v. Georgia, which provided the blueprint for the Eleventh Amendment. Stevens writes …

“Justice Iredell relied on the text of the Judiciary Act of 1789, not the State’s assertion that Article III did not extend the judicial power to suits against unconsenting States. For Justice Iredell, then, it was enough to assume that Article III permitted Congress to impose sovereign immunity as a jurisdictional limitation; he did not proceed to resolve the further question whether the Constitution went so far as to prevent Congress from withdrawing a State’s immunity.”

What I find compelling about the Stevens and Souter dissents in Seminole (especially Souter’s) is the scope and depth of historical evidence presented to support the conclusion that the majority erred in Seminole, when it held that the Eleventh Amendment bars Congress from abrogating state immunity under its Article I powers. First, Souter maintains, that the majority rested its opinion on a flawed reading of a case from 1890 (Hans v. Louisiana), about which he writes …

“The Court [in Hans] elected, to recognize a broader immunity doctrine, despite the want of any textual manifestation….Because no federal legislation purporting to pierce state immunity was at issue, it cannot fairly be said that Hans held state sovereign immunity to have attained some constitutional status immunizing it from abrogation….the Court today simply compounds the already serious error in taking Hans the further step of investing its rule with constitutional inviolability against the considered judgment of Congress to abrogate it.

Souter presents a compelling, in-depth narrative to argue that interpreting the Eleventh Amendment as blanket immunity for states is untethered from its intent in 1795 and more broadly asserts “that American political thought [at the founding period] had so revolutionized the concept of sovereignty itself that calling for the immunity of a State as against the jurisdiction of the national courts would have been sheer illogic.”

More specifically, Souter cites Justice Marshall in Cohens v. Virginia (1821), stating, “The point of the Eleventh Amendment, according to Cohens, was to bar jurisdiction in suits at common law by Revolutionary War debt creditors, not ‘to strip the government of the means of protecting, by the instrumentality of its Courts, the constitution and laws from active violation.’”

Like many of you, I finally saw Hamilton over the Independence Day weekend on Disney+, and I was very amused by the portrayal of Jefferson as a rock-star dilettante, especially when he debates, in rap-battle-style, Hamilton’s plan to assume state debts and establish a national bank. War debts were a profoundly sensitive matter at the time, especially when the debtor was a state that owed money to a citizen of another state, as was the case in Chisolm (and again in Hans after the Civil War). Hence, there is ample historic evidence to recommend Souter’s interpretation of the intent of the Eleventh Amendment.

Souter and Stevens maintain that the Eleventh Amendment was narrowly written to “constrict the scope” of the Diversity Clauses of Article III. In a nutshell, if a plaintiff’s ONLY plea to trial in federal court, when suing a state, is fear of bias, the amendment prohibits the lawsuit. As Souter writes, “The best explanation for our practice belongs to Chief Justice Marshall:  the Eleventh Amendment bars only those suits in which the sole basis for federal jurisdiction is diversity of citizenship.” [Emphasis added]

And perhaps most pointedly, Souter invokes Iredell in Chisolm, stating “[t]he United States are sovereign as to all the powers of government actually surrendered: each State in the Union is sovereign, as to all the powers reserved.” So unless some scholar wants to unravel the body of evidence Souter brings to the table, one must accept his argument that nowhere in the record is there any evidence that the intent of the framers was to “affirmatively guarantee state sovereign immunity against any congressional action to the contrary.”

Despite the fact that the Souter dissent provides a far more scholarly case for its interpretation of the Eleventh Amendment than the reasoning presented by the majority in Seminole, the former is not the holding that prevails. Anyone who may have grounds to bring civil federal claims against a state, or state actor, is barred from doing so in nearly all instances. Not just copyright and other intellectual property complaints.

As described in this post, there are some quirky coincidences associated with the Allen v. Cooper case, and among these is the fact that this epic tale of state sovereign immunity begins and ends (for now) in North Carolina. After all, documentary filmmaker Rick Allen is a citizen of North Carolina, who sued his home state for infringement of his audio-visual works. So, a plain reading of the Eleventh Amendment might lead one to think that this automatically qualifies him to sue, given the textual certainty of the words, “…against one of the United States by citizens of another state.” Yet, it was the Hans decision—130 years ago—that magically erased the citizens of another state condition and, according to Souter’s dissent in Seminole, erased all historic context to go with it.

Allen v. Cooper Revisited Part I: State of Play

Ever since the case Allen v. Cooper first appeared on my radar, and especially after the Supreme Court handed down its decision in late March, I have been admittedly a wee bit obsessed with the subject of state sovereign immunity (a.k.a. Eleventh Amendment immunity). What is Eleventh Amendment immunity? In a nutshell, it means you cannot sue a state (including arms of the state, like universities) in federal civil cases. So, if you like tilting at windmills, and mucking about in the dusty attics of American law, as I do, perhaps you will indulge the series of posts I plan to write on this difficult—and what may ultimately prove unresolvable—constitutional challenge to the protection of intellectual property. 

As reported in the post I wrote following the decision in Allen v. Cooper, the majority and concurring opinions, written by Justices Kagan and Breyer respectively, came unusually close to expressing regret that precedent led the Court to the only decision available—affirming that states are free to infringe the copyrights of private citizens and entities with impunity.

Further, the Court all but nudged Congress to have another go at resolving the statutes written in 1990 to intentionally abrogate state immunity in intellectual property suits. “[A] tailored statute can effectively stop States from behaving as copyright pirates. Even while respecting constitutional limits, it can bring digital Blackbeards to justice,” writes Justice Kagan for the majority. And in his concurrence, Justice Breyer observed, “Whether a future legislative effort along those lines will pass constitutional muster is anyone’s guess. But faced with the risk of unfairness to authors and inventors alike, perhaps Congress will venture into this great constitutional unknown.” Only Justice Thomas, in his concurring opinion, averred, on separation grounds, that the Court has no business urging Congress to do anything.

In response to the Allen decision, Senators Tillis and Leahy of the Judiciary Committee, on April 28th, sent letters to the U.S. Patent and Trademark Office and the U.S. Copyright Office, stating their concern “about the impact this may have on American creators and innovators.” The letters ask both agencies to “research this issue to determine whether there is sufficient basis for federal legislation abrogating State sovereign immunity….”

Beyond the fact that I personally support the rights of authors and am, therefore, opposed to creative works being freely pirated by state entities, I find the challenge of overcoming Eleventh Amendment immunity an intriguing subject on its own. Perhaps most especially right now, when overlapping, turbulent events in the United States have, in various ways, highlighted the federalist model of the nation.

The concept of state sovereignty, embodied in the Tenth Amendment, though traditionally viewed as a favorite principle of conservatives, has lately garnered considerable attention from a broader swath of the electorate. With a President who likes to claim he has “absolute authority” to do just about anything his thumbs can tweet, we have lately been served a steady diet of legal analyses on the theme of federal versus state law.

So, because the response to Allen reveals a rare moment of synergy, when both the Court and Congress seem to want to prohibit the States from freely infringing intellectual property, understanding why this result was not achieved by three modern laws offers a unique, if frustrating, glimpse into the complex underpinnings of our federal system.

How We Got Here

Article I section 8 of the Constitution lists the plenary powers of Congress, and among these, paragraph 8 (the IP clause) grants the power to enact patent and copyright laws. As articulated in Federalist 43 (Madison), it was anticipated that uniform, federal IP laws would best serve the interests of the new nation; and although there is little record of any controversy about that principle at the founding period, pre-emption of state copyright laws did not occur as a practical reality until the 1976 copyright act.

Meanwhile, an inherent tension was already present with the passage of the first copyright law of 1790 because the jurisdictions for litigation would eventually (i.e. beginning in 1819) be the federal courts. And one aspect of the Constitution that was very controversial at the founding period was the establishment of the federal court system in Article III. Anti-federalists and skeptics of the Plan of the Convention, already anxious about the uncharted boundaries between states’ rights and the new central government, were especially wary that the federal courts might swallow a state’s sovereignty to make and enforce its own laws.

With the Tenth Amendment in the Bill of Rights of 1791, state sovereignty was affirmed as a general principle. But four years later, the South Carolina estate of one Alexander Chisolm filed suit against the State of Georgia, seeking monies owed for materiel provided during the Revolution. When the Supreme Court, in a 4-1 decision, found for Chisolm, it was a big We told you so moment for the aforementioned skeptics of the federal court system. Consequently, the lone dissent in Chisolm v. Georgia, written by Justice James Iredell, served as the predicate for the Eleventh Amendment, passed in 1795. It says:

The Judicial Power of the United States shall not be construed to extend to any suit in law or equity, commenced or prosecuted against one of the United States by citizens of another state, or by citizens or subjects of any foreign state.

More about Justice Iredell—I think he’s an interesting cat—in a subsequent post. But for now, let’s just say that the Eleventh Amendment can be a troublesome little bug in the Constitution, and not only for IP law. If Congress can pass laws under Article I that are only justiciable in federal court, but states are immune from suit in federal court, a natural question any modern plaintiff might ask is whether contemporary justice is being confounded by antiquated precedent. And there’s an extent to which the answer to that appears to be, Yes, it is.

Not only is the historic lineage of sovereign immunity (i.e. English law dating back several centuries) anathema to democracy, but according to scholar John V. Orth, U.S. state immunity is a vague doctrine at best. He writes, “…the search for the original understanding on state sovereign immunity bears this much resemblance to the quest for the Holy Grail: there is enough to be found so that the faithful of whatever persuasion can find their heart’s desire. And … the object of the search may prove equally illusory.”

That quote was cited in the U.S. Copyright Office Report of 1988, presented to Congress by then Register Ralph Oman, examining the issue of state infringements and Eleventh Amendment immunity. At that time, five district courts had held that the copyright law did not anywhere clearly state that Congress expressly intended to abrogate state immunity from claims of copyright infringement.

Shortly after that USCO report was published, the Supreme Court, in the case Pennsylvania v. Union Gas, held that Congress, pursuant to its rights under the commerce clause in Article I, had the authority to abrogate state immunity. Based largely on the weight of that decision, Congress passed the Copyright Remedy Clarification Act (CRCA) of 1990, along with its sibling laws the Patent Reform Act (PRA) and the Trademark Remedy Clarification Act (TRCA). This trio of IP laws responded to the obstacles presented in those prior cases during the 1980s by expressing Congress’s clear intent to abrogate immunity in suits pertaining to its Article I powers under paragraph 8. But …

In 1996, in the case Seminole Tribe v. Florida, the majority opinion written by Justice Rehnquist overturned Union Gas, stating, “In overruling Union Gas today, we reconfirm that the background principle of state sovereign immunity embodied in the Eleventh Amendment is not so ephemeral as to dissipate when the subject of the suit is an area, like the regulation of Indian commerce, that is under the exclusive control of the Federal Government.” In other words, Seminole Tribe held that Article I powers are not sufficient grounds for Congress to abrogate state immunity, which meant that the three IP clarification laws of 1990 now rested on shaky ground.

In Justice Stevens’s dissent in Seminole Tribe, he argued that in overturning Union Gas, the Court “…prevents Congress from providing a federal forum for a broad range of actions against States, from those sounding in copyright and patent law, to those concerning bankruptcy, environmental law, and the regulation of our vast national economy.” Then, in refuting the majority’s interpretation of Chisolm, he added, “For this Court to conclude that time-worn shibboleths iterated and reiterated by judges should take precedence over the deliberations of the Congress of the United States is simply irresponsible.”

What About Due Process?

“States…have a ‘specific duty’ not to infringe that [which] ‘is assigned by law’ and upon which ‘individual rights depend.’ One might therefore expect that someone injured by a State’s violation of that duty could ‘resort to the laws of his country for a,’ remedy, especially where, as here, Congress has sought to provide one.”  – Justice Breyer, Allen v. Cooper, citing Marbury v. Madison.

Three years after Seminole, in a pair of decisions known as the Florida Prepaid cases, both the PRA and the TRCA failed, subject to the Union Gas precedent that Article I powers were no basis for Congress to abrogate State immunity. But, also in Florida Prepaid, the question was presented as to whether Congress has the right to abrogate immunity pursuant to its powers under Section 5 of the Fourteenth Amendment, which says that Congress may pass laws necessary to protect citizens’ rights under Section 1 of that amendment, including this right: “nor shall any state deprive any person of life, liberty, or property without due process of law.”

So, again, any reasonable person might ask, if an IP plaintiff can only pursue a complaint in federal court, and state immunity bars access to that court, then isn’t the claimant being denied due process? Well ….  Justice Rehnquist, in considering whether other avenues of due process, like tort or unfair competition, might be available state court remedies, referred to the unlikely prospect of shoehorning IP complaints into those other legal doctrines as “inconvenient” for a plaintiff to attempt.

Further, it had been observed by the Copyright Office and others that even if those state remedies were viable, the resulting caselaw would be a thicket of common law IP precedents, growing like legal kudzu atop the already complex hedgerows dividing the federal circuits. But this difficulty Rehnquist dismissed as an “Article I problem.” The same Article I he opined does not give Congress the power to abrogate state immunity. Anyone who’s ever read Joseph Heller’s Catch 22 may find this passage in Seminole agonizingly familiar. 

Concurrent with the Florida Prepaid decisions, the case Alden v. Maine put another nail in the coffin of Congress’s Article I right to abrogate immunity and, significantly, reiterated that state sovereign immunity was not created by the Eleventh Amendment, but was affirmed by it. That seemingly moot distinction is actually a matter of considerable debate, about which I refer you to the “Holy Grail” comment made by Mr. Orth.

After Alden, a 2000 copyright case, in which author Denise Chavez’s work was infringed by the University of Houston, the Fifth Circuit dismissed on immunity grounds and officially doomed the CRCA to the same fate as the PRA and the TRCA.  In fact, after Chavez v. Arte Publico Press, many experts were surprised that the Supreme Court granted cert in Allen v. Cooper, assuming the questions to be presented were already answered and, for rightsholders, a dead issue. Allen presented a clause-by-clause argument, asserting that the IP clause is distinguishable from other Article I powers of Congress, and although that argument failed, I will discuss it a little further in another post in this series.  And that brings us to where things stand today.

Overcoming Eleventh Amendment Immunity

In 2003, in response to the 1990s defeats of the CRCA et al, Congress again took up the issue, seeking various rationales to abrogate immunity for IP claims against states. Among the arguments presented, one that should be especially irritating to creators, is the fact that a state may own intellectual property, and file suit for infringement, while it remains shielded from litigation, leaving it free to infringe. At that time, this injustice was seen as a possible avenue—to deny states the ability to litigate IP claims unless they waived their immunity accordingly. This was, and remains, a non-starter due to the strenuous objections of state Attorneys General.

Today, despite the Court’s apparent dismay with its conclusion in Allen, the so-called roadmap it drew Congress for abrogating immunity is actually a very narrow path through some pretty dense woods. Based solely on the Fourteenth Amendment, section 5 premise, the Court held that the only foundation for abrogating immunity will have to be based on a preponderance of evidence that there is a pattern of “intentional and reckless” infringement by state entities. This is no small feat. For one thing, nobody can say how much evidence of state infringement would constitute a pattern compelling enough for the Court to sustain abrogation. And the only way to find out is for Congress to pass new laws, and some party to litigate against a state all the way to the Supreme Court.

Further, the evidence needed to show a pattern of “intentional and reckless” infringement may not be available, particularly because the largest entities with the capabilities to obtain that data may not have it anymore. Chris Mohr, VP for Intellectual Property and General Counsel at Software & Information Industry Association, explains:

“We still get whistleblower reports of state entities that infringe, but we haven’t been tracking that information for 20 years because Allen reached the same end result as the Fifth Circuit did in 2000 [in Chavez].  As a result, it didn’t make sense to track and organize that information in the context of our enforcement program.  But that’s not to say this problem has gone away, and many of our members are concerned.  COVID caused an increase in the licensing of software and materials for distance learning, creating exposure for many of our members.  One of them is now in litigation against the state of Nebraska for copyright infringement.”

I will interject a comment here to say that the status quo seems wildly out of whack with fairness and the purpose of U.S. intellectual property law. It should not be the case that individual authors, exercising their constitutional rights as individuals, should have the burden of demonstrating that they are members of a protected class, merely because the alleged infringer happens to be a state.

On the contrary, a single state infringer, like a university or museum, can cause considerable harm to a single author by means of a single act of infringement. And copyright law is intended to remedy that one infringement for that one author. So not only might the scope and frequency of state infringements prove difficult to ascertain, it is truly unfortunate that it is necessary at all. The Eleventh Amendment leaves the individual author as a David, sans slingshot, facing a multitude of Goliaths.

So, this is an odd moment. The Supreme Court and Congress both seem to want the law to work differently than it does. But an amendment passed in 1795, the foundation of which is the subject of endless, circular debate, serves as a major obstacle to what most people would probably consider basic fairness for rightsholders, and beyond.

To date, almost the only successful abrogation of state immunity, pursuant to the Fourteenth Amendment, has been in the service of major civil rights disputes with states, like the Voting Rights Act (1965). Because that history is intertwined with racial disparity and the original predicate for the Fourteenth Amendment, my friend Steve Tepp is inclined to say that “So far, it seems that we can only abrogate sovereign immunity regarding any issue over which we fought a civil war.”  That’s setting the bar rather high I would say. But that’s how things stand.

Allen v. Cooper: Justly Decided If Not Exactly Just

Professional creators following the case Allen v. Cooper were no doubt disappointed by the Supreme Court’s March 23 decision—a unanimous holding that the States (and/or their agents) are generally free to infringe copyrights with impunity. But perhaps authors of works should not to be entirely discouraged on this matter, because it seems clear from the opinions written that the Justices would have preferred if the law had led them to the opposite conclusion. Moreover, a path for legislative reform remains open.   

A Quick Recap

See post here, or read more extensively on the website of plaintiff Rick Allen. The short version is that Allen’s company Nautilus Productions filmed and photographed excavation and research work performed on Blackbeard’s flagship Queen Anne’s Revenge, which was discovered off the North Carolina coast in 1996. Subsequently, the state made unlicensed uses of Allen’s copyrighted materials, primarily online, and when Allen sued for infringement, North Carolina invoked its sovereign immunity under the Eleventh Amendment, which bars citizens or entities from bringing federal suits against the states or its agents. 

In 1990, Congress passed two laws, the Patent Remedy Act and the Copyright Remedy Clarification Act, both designed to abrogate state sovereign immunity specifically for patent and copyright claims where states are alleged to be the infringing parties. In 2015, North Carolina passed “Blackbeard’s Law,” which specifically lays claim to photographic and AV works documenting shipwreck material a “public record.” So, why didn’t Congress’s CRCA protect Allen’s copyrights in this case? Well …

The IP Clause, the Eleventh and the Fourteenth Amendment walk up to the bar …

As we all know, Article I of the Constitution grants Congress the authority to establish copyright and patent laws; and one rationale for that clause, as Madison noted in Federalist 43, was the assumption that the new nation would be best served by uniform (i.e. federal) laws for intellectual property. (In copyright practice this uniformity was not fully adopted until 1978, and then there’s the whole sound recordings morass, but Madison’s seminal hopes were succinctly clear.) 

At the same time, the prospect of erecting a federal court system was a sensitive matter among anti-Federalists, who were hardly sold on the prospect of union among the States in the first place, let alone allowing their State governments to be potentially sued in the new federal courts by citizens of other States. Thus, in response to just such a case arising, the Eleventh Amendment was passed in 1795 to affirm the principle of “state sovereign immunity,” already extant at the founding period.

Without trying to cram a history of sovereign immunity into this post, suffice to say that States are not generally subject to litigation in federal court but for a handful of exceptions, and most of these exceptions derive from the Fourteenth Amendment of 1868. Relevant to Allen v. Cooper, Section 1 of the Fourteenth affirms civil liberties to all Americans, and Section 5 affirms Congress’s authority to pass such laws as may be necessary to enforce Section 1. Thus, sovereign immunity is abrogated where a State’s conduct or law runs afoul of constitutionally protected rights. 

So, it might seem reasonable to assume that the Article I power of Congress to write copyright and patent laws, which secure the intellectual property rights of all U.S. citizens, would naturally fall into the scope of protections affirmed in the Fourteenth Amendment. “No state shall make or enforce any law which shall abridge the privileges or immunities of citizens of the United States; nor shall any state deprive any person of life, liberty, or property without due process of law….” 

In fact, whether one views IP protections as grounded in natural rights or as purely utilitarian forms of property rights, the Fourteenth Amendment, combined with the Article I power, would seem to support Congress’s authority in 1990 to write the pair of laws that explicitly declared that sovereign immunity does not foreclose infringement claims brought by copyright and patent owners against the States. Alas, not so much.

A Very High Standard

Allen’s claim in this case rested on the premise that the 1990 CRCA abrogated the sovereign immunity of North Carolina; but unfortunately, the Supreme Court had already weighed this exact argument with respect to the CRCA’s sibling law, the Patent Reform Act. In the 1999 decision, in a case known as Florida Prepaid, the Court held that the Patent Reform Act did not abrogate sovereign immunity for two intertwined reasons. Article I powers alone are not sufficient grounds for Congress to circumvent sovereign immunity, and this can only be addressed by Section 5 of the Fourteenth Amendment where there is compelling evidence of a harm being intentionally caused by the State, and where no other remedies (i.e. due process) are available. 

In legal terms, the opinion states, “a Section 5 abrogation of sovereign immunity must be ‘congruent and proportional’ to the Fourteenth Amendment injury it seeks to remedy.” In practical terms that means if Congress wants to salvage the intent of the CRCA and/or the Patent Reform Act, they will need evidence, which proves that intentional infringement by State actors poses a significant threat to the interests and rights of authors and/or inventors. 

In reference to Florida Prepaid, the Kagan opinion reminds us, “Congress, we observed, ‘did not focus’ on intentional or reckless conduct; to the contrary, the legislative record suggested that ‘most state infringement was innocent or at worst negligent.’” Those data are not sufficient to circumvent the sovereign immunity. But that was then.

Especially with regard to works protected by copyright, digital technologies have changed the landscape considerably since 1990—even since 1999. Consequently, State actors (e.g. State universities) have both new means and new motives to infringe more frequently and more harmfully than the pre-digital age. Seemingly aware of these contemporary realities, the Supreme Court’s discussion of Allen v. Cooper connotes discontent with its unavoidable conclusion.

The Court Rules Justly But Hints Justice Is Not Served

The majority opinion written by Justice Kagan, and joined by Roberts, Alito, Gorsuch, Sotomayor, and Kavanaugh, with Thomas, Breyer, and Ginsburg concurring, was bound by precedent, namely Florida Prepaid. Allen’s appeal to the CRCA could not hope to overcome the principle of stare decisis, let alone in a matter that sets so high and precise a bar for setting aside states’ rights. Nevertheless, the opinions of the Justices not only present a roadmap that Congress might follow to seal the sovereign immunity loophole for copyright (and patent) owners, it practically calls upon Congress to do so. The Kagan opinion asks…

“All this raises the question:  When does the Fourteenth Amendment care about copyright infringement? Sometimes, no doubt. Copyrights are a form of property. And the Fourteenth Amendment bars the States from “depriv[ing]’ a person of property ‘without due process of law.’ … So an infringement must be intentional, or at least reckless, to come within the reach of the Due Process Clause.” (citations omitted)

Then, in a passage that all but elbows the IP Subcommittee in the ribs …

“Congress likely did not appreciate the importance of linking the scope of its abrogation to the redress or prevention of unconstitutional injuries—and of creating a legislative record to back up that connection. But going forward, Congress will know these rules. And under them, if it detects violations of due process, then it may enact a proportionate response. That kind of tailored statute can effectively stop States from behaving as copyright pirates. Even while respecting constitutional limits, it can bring digital Blackbeards to justice.”

This less than subtle overture to the legislature was one of two points of moderate dissent by Justice Thomas, whose concurring opinion admonished the Court to refrain from advising Congress on the authorship of future legislation. But writing almost the opposite view, the concurring opinion by Justice Breyer, and joined by Justice Ginsburg, laments the unavoidable conclusion necessitated by law, if not by principle. “That our sovereign-immunity precedents can be said to call for so uncertain a voyage suggests that something is amiss,” the Breyer opinion declares. 

Amiss indeed. From the moment Madison and Pinckney drafted the IP Clause, it cannot have been imagined, let alone desired, that the individual States would be left free to appropriate intellectual property from individual citizens. After all, it was a State legislature, in the Massachusetts copyright law of 1786, that declared, “As the principal encouragement such persons can have to make great and beneficial exertions of this nature, must exist in the legal security of the fruits of their study and industry to themselves, and as such security is one of the natural rights of all men, there being no property more peculiarly a man’s own than that which is produced by the labour of his mind.”