The Supreme Court unanimously held this week that sovereign immunity insulates a state from suit for copyright infringement. Allen et al. v Cooper, Governor of North Carolina, et al., 589 U.S. ___(2020). The state in the Supreme Court case was North Carolina. In 2011 Lutzker & Lutzker fought a similar battle in federal district court in California with the same result. But, as we argued in California, a copyright owner may not be totally without a remedy in such cases.
In 1996 the remains of a sunken French slave ship were discovered just off the coast of North Carolina. It was determined that the ship was the Queen Anne’s Revenge, the flagship of the famous pirate Blackbeard, which had run aground in 1718. The state (which clearly owned the rights to the ship) commissioned a salvage company, which in turn hired a videographer who spent two decades documenting the salvage operation in photographs and videos. He registered his copyright in all the works. After resolving an initial dispute over the state’s publication of his works without permission, the state continued to display his work online. Finally, the videographer brought suit in federal court for copyright infringement. The district court agreed with the videographer, but the Fourth Circuit Court of Appeals reversed, and the case ended up before the Supreme Court.
The videographer’s argument was that the Copyright Remedy Clarification Act of 1990 (“CRCA”) had expressly abrogated the state’s sovereign immunity as to copyright suits. In affirming the Fourth Circuit, the Supreme Court relied on, and found no reason to distinguish, College Sav. Bank v. Florida Prepaid Postsecondary Ed. Expense Bd., 527 U.S. 666 (1999), where the Court held that a similar patent statute, despite express language, did not successfully abrogate sovereign immunity as to patent infringement suits.
Although the CRCA and the Patent Remedy Act clearly stated their intention to abrogate sovereign immunity, the statutory language must have a constitutional basis for the abrogation to be valid. The Court held in Florida Prepaid and in the North Carolina case, respectively, that there was no valid constitutional basis, either in the Intellectual Property Clause of Article I or in the Due Process Clause of the 14th Amendment.
But, despite the Court’s holding, a copyright owner may have a remedy at least for the purpose of stopping a continuing infringement. This so because of the doctrine set forth in Ex parte Young (209 U.S. 123 (1908)), which allows a suit for injunctive relief against a state official acting in his or her official capacity if the official is enforcing a law in violation of the federal constitution. This is not a suit against a state but against the executing official.
It’s also possible under certain limited circumstances to recover damages from a state official in his or her individual capacity if the individual knew or reasonably should have known that his or her action would violate constitutional rights of the plaintiff, or if the action were taken with the malicious intent to deprive the plaintiff of constitutional rights. Harlow v. Fitzgerald, 457 U.S. 800, 815 (1982). While the official may assert the defense of “qualified immunity,” willful behavior, such as continuing the infringing activity after being put on notice that it is illegal, can void that defense.
So, despite the Supreme Court’s decision, there is still hope for a copyright owner whose work is infringed by a state.