The U.S. Supreme Court has added a copyright infringement case involving Blackbeard’s pirate ship to its docket for next term. On a practical level, the issue in Allen v. Cooper is the extent to which states can be sued for copyright infringement by private citizens.

Facts of Allen v. Cooper

In 1717, the pirate Edward Teach, better known as Blackbeard, captured a French merchant vessel and renamed her Queen Anne’s Revenge. Teach armed the Revenge with 40 cannons and made it his flagship. But the following year, the Revenge ran aground about a mile off the coast of Beaufort, North Carolina, and Teach abandoned it there. Under state law, the ship and its artifacts later became the property of North Carolina and subject to its "exclusive dominion and control."

In 1996, Intersal, Inc., a private research and salvage firm operating under a permit issued by North Carolina, discovered the Revenge. Intersal hired Frederick Allen, a videographer, and his production company, Nautilus Productions, LLC, to document the salvage operation. According to Allen, he accumulated "a substantial archive of video and still images showing the underwater shipwreck and the efforts of teams of divers and archaeologists to recover various artifacts from [it]." Allen registered 13 copyrights in these materials with the U.S. Copyright Office, with each copyright covering a year’s worth of footage.

Allen alleges that at some point before October 2013, the State of North Carolina and its Department of Natural and Cultural Resources (DNCR) infringed Nautilus’s copyright in the materials by uploading and posting them online. In October 2013, North Carolina, the DNCR and others entered into a settlement agreement with Nautilus, whereby they (i) paid Nautilus $15,000 for prior infringements; and (ii) agreed not to infringe the Works going forward.

On December 1, 2015, Nautilus sued the State in the U.S. District Court for the Eastern District of North Carolina, arguing that it had resumed its copyright infringement. The State moved to dismiss the copyright claim on the ground that the Eleventh Amendment’s provision of state sovereign immunity shields the State from suit in federal court. Allen responded to the claim of sovereign immunity by arguing that North Carolina’s sovereign immunity was also abrogated by the federal Copyright Remedy Clarification Act of 1990. The district court agreed.

Copyright Remedy Clarification Act

The Copyright Remedy Clarification Act of 1990 (CRCA) aims to protect federal copyrights against infringement by States. It specifically defines potential infringers of copyright to include “any State, any instrumentality of a State, and any officer of a State or instrumentality of a State acting in his or her official capacity,” and provides that such entities and persons shall be subject to copyright liability “in the same manner and to the same extent as any nongovernmental entity.” The CRCA further provides that such entities and persons “shall not be immune, under the Eleventh Amendment of the Constitution of the United States or under any other doctrine of sovereign immunity, from suit in Federal Court by any person” alleging copyright infringement.

Fourth Circuit’s Decision

The Fourth Circuit reversed. It held that the CRCA did not validly abrogate the State’s Eleventh Amendment immunity.

In reaching its decision, the federal appeals court first held that any reliance by Congress on Article I’s Intellectual Property Clause was an invalid basis for enacting the CRCA because “Seminole Tribe and its progeny ... make clear that Congress cannot rely on its Article I powers to abrogate Eleventh Amendment immunity.”

The Fourth Circuit further held that Congress did not validly enact the CRCA pursuant to Section 5 of the Fourteenth Amendment because, in order to do so, “Congress must both (1) make clear that it is relying on [Section] 5 of the Fourteenth Amendment as the source of its authority and (2) ensure that any abrogation of immunity is ‘congruen[t] and proportional[]’ to the Fourteenth Amendment injury to be prevented or remedied.” According to the Fourth Circuit’s holding, “Congress satisfied neither requirement” in enacting the CRCA.

U.S. Supreme Court Grants Petition for Certiorari

Allen appealed to the U.S. Supreme Court, arguing that “the contours of Congress’s constitutional authority to abrogate state sovereign immunity from suits for copyright infringement should ultimately be addressed, definitively, by this Court.” Allen also argued that copyright infringement by states poses an important, continuing problem that warrants review.

“Those most vulnerable to state copyright infringement are small businesses,” his petition for certiorari argued. “Because small businesses lack the resources necessary to fight state actors effectively and typically need promise of recompense for past infringement before initiating litigation, they currently find themselves largely helpless in the face of state infringement.”

The Recording Industry of Association of America (RIAA) filed an amicus brief in favor of the Court reviewing the Fifth Circuit’s decision. "States are once again free to engage in copyright infringement — no matter how widespread or blatant — without fear of having to pay any money as a result," RIAA wrote. "Unsurprisingly, then, despite Congress's efforts, copyright infringement by States is once again a very serious problem."

The Court granted certiorari on June 3, 2019. The case will be heard in the Court's next term beginning in October.  The justices have specifically agreed to consider the following question: “Whether Congress validly abrogated state sovereign immunity via the Copyright Remedy Clarification Act in providing remedies for authors of original expression whose federal copyrights are infringed by states.” Accordingly, the case will focus on state’s rights just as much as intellectual property.

Scarinci Hollenbeck’s intellectual property attorneys will continue to track the status of Allen v. Cooper, and we encourage you to check back for updates.

If you have any questions, please contact us

If you have any questions or if you would like to discuss the matter further, please contact me, William R. Samuels, or the Scarinci Hollenbeck attorney with whom you work, at 201-806-3364.