States are Immune from Copyright Infringement Actions Allen v. Cooper: Copyrights, Pirates, and Sovereignty

April 3, 2020

The United States Supreme Court recently held[1] that Congress lacked authority to abrogate a state’s Eleventh Amendment sovereign immunity from copyright infringement lawsuits based on the Intellectual Property Clause[2] or Section 5 of the Fourteenth Amendment. 

In doing so, the Court extended its precedent[3] that Congress cannot remove the states’ sovereign immunity based on its Article I powers over patents.  The Court also employed a means-end test to hold that Congress was not authorized to enact the Copyright Remedy Clarification Act of 1990 (“CRCA”) against the states based on the Fourteenth Amendment Due Process Clause.[4] 

Nonconsenting states, therefore, are immune from CRCA copyright infringement lawsuits. 

Allen v. Cooper

North Carolina was the legal owner of the shipwreck Queen Anne’s Revenge.[5]  The Revenge was the flagship of pirate Edward Teach, better known as Blackbeard, until it ran aground on a sandbar a mile off Beaufort, North Carolina in 1718.  The wreck was later discovered by a marine salvage company in 1996.  The state contracted with the salvage company for recovery activities, the company retained a local photographer, and the photographer documented the salvage efforts for more than a decade.[6] 

The state published some of the videos and photos on its website without the photographer’s permission and over his protests, which resulted in a settlement and agreement as to the parties’ respective rights to the materials.  However, the state later posted videos online and used a photo in a newsletter leading to a copyright infringement action. 

The District Court denied the state’s motion to dismiss based on sovereign immunity grounds, the United States Court of Appeals for the Fourth Circuit reversed on interlocutory appeal, and the Supreme Court granted certiorari.[7] 

State Sovereign Immunity

Each state is a sovereign entity in our federal system.[8]  It is inherent in the nature of sovereignty not to be amenable to a suit absent consent.[9]  That fundamental aspect of sovereignty constrains federal judicial authority.[10]

However, courts may entertain suits against nonconsenting states if (1) Congress enacted unequivocal statutory language abrogating the states’ immunity from suit[11] and (2) some constitutional provision allows Congress to encroach on the states’ sovereignty.[12]

The Copyright Remedy Clarification Act of 1990

Congress used clear language in abrogating the states’ immunity from copyright infringement suits in CRCA, which provides that the states “shall not be immune” from such actions.[13]

However, the Intellectual Property Clause and Section 5 of the Fourteenth Amendment do not allow Congress to encroach on the states’ sovereignty. 

The Intellectual Property Clause

Congress has the power to 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, such as copyrights and patents.[14]  These monopoly rights impose a corresponding duty (i.e., not to infringe) on states as well as private parties.[15]

Pursuant to the prior precedent of Florida Prepaid, however, the power to secure an intellectual property owner’s exclusive right under Article I stops when it runs into sovereign immunity.[16]

The Fourteenth Amendment

Section 5 of the Fourteenth Amendment can authorize Congress to strip the States of immunity.[17] 

For an abrogation statute to be appropriate under Section 5, it must be tailored to remedy or prevent conduct infringing the Fourteenth Amendment’s substantive prohibitions proscribed in Section 1.[18]  Congressional action must be in keeping with the Fourteenth Amendment rules it has the power to enforce,[19] such as depriving a person of property without due process of law.[20]  An infringement must be intentional, or at least reckless, to come within reach of the Due Process Clause.[21]

The Court employs a means-end test to evaluate Congressional action under the Fourteenth Amendment.  There must be a congruence and proportionality between the injury to be prevented or remedied and the means adopted to that end.[22] 

On the one hand, courts are to consider the constitutional problem Congress faced—both the nature and the extent of state conduct violating the Fourteenth Amendment.[23]  On the other hand, courts are to examine the scope of the response Congress chose to address that injury.[24] 

Before enacting the CRCA, the Register of Copyrights prepared a report about the effects of the Eleventh Amendment on copyright enforcement (“Oman Report”) following a year-long examination.  The Oman Report concluded that “copyright proprietors have demonstrated they will suffer immediate harm if they are unable to sue infringing states in federal court.”[25] 

However, the 158-page Oman Report only identified seven court cases brought against states (with another two dismissed on the merits), five anecdotes taken from public comments (without further corroboration), and only two instances of a state’s intentional violation, which is required to raise a constitutional issue.[26]  Its author also noted that state infringement was not widespread, the states were not going to get involved in wholesale violation of the copyright laws, and the states are respectful of copyright law and will continue to respect the law, and questioned what state would want to get a reputation as a “copyright pirate.”[27]

Justice Kagan, writing for the majority, found that CRCA’s aim is to provide a uniform remedy for statutory infringement, not to redress or prevent unconstitutional conduct.  CRCA’s indiscriminate scope therefore is out of proportion to any due process problem.[28] 

Justice Kagan also invited Congress to pass a valid, tailored copyright abrogation law complying with the Court’s congruence and proportionality test to stop states from behaving like pirates and to bring digital Blackbeards to justice.[29] 

Ericksen Arbuthnot is celebrating its 70th year of service to clients throughout California and its experienced litigators have extensive knowledge and skill handling matters in appellate, public entity defense, intellectual property, and many other practice areas. 

Andrew J. Chan is a Senior Associate in Ericksen Arbuthnot’s Oakland/East Bay office, a member of the firm’s Appellate Practice Group, and registered to practice before the United States Patent and Trademark Office. Gregory A. Mase is a Senior Counsel in Ericksen Arbuthnot’s Oakland/East Bay office and co-chair of the firm’s Appellate Practice Group. 

Mr. Chan can be reached at (510) 832-7770 or  Mr. Mase can be reached at (510) 832-7770 or


[1] Allen v. Cooper, 2020 U.S. LEXIS 1909, *2 (Mar. 23, 2020). 

[2] U.S. Const., art. I, § 8, cl. 8. 

[3] Florida Prepaid Postsecondary Educ. Expense Bd. v. College Sav. Bank, 527 U.S. 627, 636 (1999). 

[4] Allen, 2020 U.S. LEXIS 1909 at *18-19; Boerne, 521 U.S. at 520. 

[5] See 102 Stat. 433, 43 U.S.C. § 2105(c); N. C. Gen. Stat. § 121-22 (2019). 

[6] Allen, 2020 U.S. LEXIS 1909 at *5-6. 

[7] Allen, 2020 U.S. LEXIS 1909 at *7-9. 

[8] Allen, 2020 U.S. LEXIS 1909 at *9; Seminole Tribe v. Fla., 517 U.S. 44, 54 (1996). 

[9] Allen, 2020 U.S. LEXIS 1909 at *9-10; Seminole Tribe, 517 U.S. at 54. 

[10] Allen, 2020 U.S. LEXIS 1909 at *10; Blatchford v. Native Village of Noatak, 501 U.S. 775, 779 (1991). 

[11] Allen, 2020 U.S. LEXIS 1909 at *10; Seminole Tribe, 517 U.S. at 56; Dellmuth v. Muth, 491 U.S. 223, 228 (1989). 

[12] Allen, 2020 U.S. LEXIS 1909 at *10; Kimel v. Florida Bd. of Regents, 528 U.S. 62, 78 (2000). 

[13] Allen, 2020 U.S. LEXIS 1909 at *10; 17 U.S.C. § 511(a). 

[14] Allen, 2020 U.S. LEXIS 1909 at *11; U.S. Const., art. I, § 8, cl. 8. 

[15] Allen, 2020 U.S. LEXIS 1909 at *11-12; Goldstein v. California, 412 U. S. 546, 560 (1973).

[16] Allen, 2020 U.S. LEXIS 1909 at *13; see also Florida Prepaid, 527 U.S. at 636 (1999) (Congress cannot use its Article I power over patents to remove the states’ sovereign immunity); Seminole Tribe, 517 U.S. at 54, 73 (Article I cannot be used to circumvent the limits sovereign immunity places upon federal jurisdiction); compare Central Va. Community College v. Katz, 546 U. S. 356, 359 (2006) (Article I’s Bankruptcy Clause enables Congress to subject nonconsenting States to bankruptcy proceedings.  However, bankruptcy proceedings a principally in rem and focused on the debtor and his estate, not the creditors (including a state); it does not implicate a state’s sovereignty to nearly the same degree as other kinds of jurisdiction.  The Bankruptcy Clause’s unique history also emerged from a federal need to curb states’ authority and wildly divergent and competing state bankruptcy schemes and the clause itself abrogated state immunity). 

[17] Allen, 2020 U.S. LEXIS 1909 at *17-18 (The Fourteenth Amendment “fundamentally altered the balance of state and federal power” that the original Constitution and the Eleventh Amendment struck); Fitzpatrick v. Bitzer, 427 U.S. 445, 456 (1976). 

[18] Allen, 2020 U.S. LEXIS 1909 at *18; City of Boerne v. Flores, 521 U.S. 507, 519 (1997). 

[19] Allen, 2020 U.S. LEXIS 1909 at *19. 

[20] Allen, 2020 U.S. LEXIS 1909 at *20.    

[21] Allen, 2020 U.S. LEXIS 1909 at *20; Daniels v. Williams, 474 U. S. 327, 328 (1986).

[22] Allen, 2020 U.S. LEXIS 1909 at *18-19; Boerne, 521 U.S. at 520. 

[23] Allen, 2020 U.S. LEXIS 1909 at *19 (That assessment usually (though not inevitably) focuses on the legislative record, which shows the evidence Congress had before it of a constitutional wrong); Florida Prepaid, 527 U.S. at 646. 

[24] Allen, 2020 U.S. LEXIS 1909 at *19 (court consider how far, and for what reasons, Congress has gone beyond redressing actual constitutional violations.  Hard problems often require forceful responses and Section 5 allows Congress to enact reasonably prophylactic legislation to deter constitutional harm.  But strong measures appropriate to address one harm may be an unwarranted response to another, lesser one). 

[25] Allen, 2020 U.S. LEXIS 1909 at *23-24; Copyright Office, Copyright Liability of States and the Eleventh Amendment 103 (1988).

[26] Allen, 2020 U.S. LEXIS 1909 at *24-25; Oman Report, pp. 7-9, 90-97. 

[27] Allen, 2020 U.S. LEXIS 1909 at *24-25; Hearings on H. R. 1131 before the Subcommittee on Courts, Intellectual Property, and the Administration of Justice, 101st Cong., 1st Sess., 53 (1989) (“Housing Hearings”). 

CRCA’s House and Senate sponsors further indicated a minimal concern with states violating copyrights.  Allen, 2020 U.S. LEXIS 1909 at *25; House Hearings, p. 48; Hearings on S. 497 before the Subcommittee on Patents, Copyrights and Trademarks, 101st Cong., 1st Sess., 130 (1989) (Sen. DeConcini).

[28] Allen, 2020 U.S. LEXIS 1909 at *27. 

Justice Thomas filed an opinion concurring in part and concurring with the judgment, which stated disagreements with Justice Kagan’s discussion of stare decisis and comment on future legislation, and one open question related to whether copyrights are property within the meaning on the Fourteenth Amendment’s Due Process Clause.  Allen, 2020 U.S. LEXIS 1909 at *28-30. 

Justice Breyer filed an opinion concurring in the judgment, which Justice Ginsburg joined.  The opinion noted that Congress’ enumerated Intellectual Clause powers operate against states no less than private parties, states have a specific duty not to infringe that is assigned by law and upon which individual rights depend, and one might expect that someone injured by a state’s violation of that duty could resort to the laws of his country for a remedy, especially when so provided by Congress.  Justice Breyer further reiterated his disagreement with Seminole Tribe and Florida Prepaid, but concurred based on the Court’s controlling decision in Florida PrepaidAllen, 2020 U.S. LEXIS 1909 at *30-32.

[29] Allen, 2020 U.S. LEXIS 1909 at *27-28.