In a remarkable decision, Allen v. North Carolina, the Supreme Court held on March 23 that the state of North Carolina can lawfully plunder a videographer’s copyrighted videos and photographs of the recovery of Blackbeard’s Revenge, a ship that foundered in 1718 in waters a mile off Beaufort, North Carolina. The Revenge, owned at the time of salvage by the state of North Carolina, was recovered by Intersal Inc. under contract with the state, and videographer Frederick Allen was retained by Intersal to document the recovery.

North Carolina, accused by Allen of impermissibly posting five of his videos online and using one of his photos in a newsletter, defended on the theory that it was protected from liability for copyright infringement by the doctrine of sovereign immunity. Sovereign immunity stems from an ancient doctrine that, since “The King can do no wrong,” the state cannot be sued for a violation of the law, let alone be found liable for it.

The law of sovereign immunity in the United States is complicated by our system of federal and state government, as structured by the U.S. Constitution and as interpreted by the courts, beginning with the U.S. Supreme Court. On its face, the doctrine of sovereign immunity prevents an individual from suing the United States or any state in the United States, although court rulings say that sovereign immunity can be waived.

One way in which the doctrine can be waived is if Congress passes a law identifying the circumstances under which the United States can be sued. A state legislature can likewise pass a law identifying the circumstances under which that state can be sued.

The complexity does not end there. What happens when Congress passes a law saying that a state—as opposed to the United States--can be sued for copyright infringement? Is it within the power of Congress to tell a state that the sovereign immunity of that state has been dispensed with for purposes of copyright infringement?

Allen v. North Carolina involves that circumstance. Congress enacted the Copyright Remedy Clarification Act of 1990 (CRCA or Act), which provides that a state “shall not be immune, under the Elev­enth Amendment [or] any other doctrine of sovereign im­munity, from suit in Federal court” for copyright infringe­ment. And the Act specifies that in such a suit a state will be liable, and subject to remedies, “in the same manner and to the same extent as” a private party.

Congress later enacted a similar provision for patents, the Patent and Plant Variety Protection Clarification Act (Patent Remedy Act). Before the decision in Allen v. North Carolina, the Supreme Court had held that the Patent Remedy Act was not effective in revoking a state’s immunity from suit under the patent laws.

How could this be? The Court referred to its ruling in Blatchford v. Na­tive Village of Noatak (1991) that (1) “each State is a sovereign entity in our federal system”; (2) it is inherent in the nature of sovereignty not to be amenable to a suit absent consent; and (3) that a fundamental aspect of sover­eignty constrains federal “judicial authority.”

Furthermore, under Seminole Tribe of Fla. v. Florida (1996), the Court permitted a federal court to entertain a suit against a nonconsenting state only if (a) Congress has enacted “un­equivocal statutory language” abrogating the states’ im­munity from the suit and (b) some constitu­tional provision allows Congress to have thus en­croached on the states’ sovereignty.

With these Supreme Court cases as background, when it was time to determine the constitutionality of the Patent Remedy Act, which revoked sovereign immunity of a state for a violation of the patent laws, the Court, in Florida Prepaid Postsec­ondary Ed. Expense Bd. v. College Savings Bank (1999), held that the Patent Remedy Act lacked a valid constitu­tional basis. Although under leg (a), the Court found sufficient statutory language in abrogating immunity, the Court found insufficient authority under the constitution’s patent and copyright clause of the constitution (in Art. I, §8, cl. 8) to support the abrogation of immunity, and similarly found insufficient authority in the Due Process Clause of the 14^th Amendment.

As to the 14^th Amendment, in enacting the Patent Remedy Act, Florida Prepaid found, Congress did not identify a pattern of unconstitu­tional patent infringement. To begin with, the Court explained, there was only thin evidence of states infringing patents at all. Moreover, even the bill’s House sponsor conceded the lack of “any evidence” of “widespread violation of patent laws.” Congress, the Court 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.” Accordingly, the Court found in Florida Prepaid that the Patent Remedy Act swept too far, and invalidated the legislation.

When, in Allen v. North Carolina, the Court addressed the constitutionality of the Copyright Remedy Clarification Act of 1990, Justice Kagan, writing for the Court, said that “Florida Prepaid all but prewrote our decision today.” She found that the legislation aimed at revoking sovereign immunity defenses to violations of copyright law were unconstitutional for the same reasons as corresponding legislation in Florida Prepaid revoking sovereign immunity defenses to violations of patent law.

While the symmetry of the Court’s thinking—in finding that because legislation relating to patents is unconstitutional, so is legislation relating to copyrights—has a superficial appeal, in the view of this author, the Court’s thinking is flawed. Whereas the Court had observed, as to patents, there was only thin evidence of states infringing patents at all, in the copyright context of this very case, there is an allegation that North Carolina impermissibly posted online five videos of Allen's and used one of his photos in a newsletter.

Unlike patent infringement, which can occur without any intent on the part of the infringer, in this particular copyright infringement, if copying did occur, the infringement would certainly have been known to the infringer. Consequently the patent context of Florida Prepaid is not on the same footing as the copyright context of Allen v. North Carolina.

Justice Thomas filed a concurring opinion, in which he agreed that Florida Prepaid is binding precedent, but disagreed with the majority’s discussion of stare decisis (i.e., the binding effect of a prior decision). (“If our decision in Florida Prepaid were demonstrably erroneous, the Court would be obligated” to correct it.) Additionally, he did not join in the Court’s discussion regarding future copyright legislation. “We should not purport to advise Congress on how it might exercise its legislative authority, nor give our blessing to hypothetical statutes or legislative records not at issue here.” Finally, in his view, “the question whether copyrights are property within the original meaning of the Fourteenth Amendment’s Due Process Clause remains open.”

Justice Breyer, joined by Justice Ginsburg, also filed a concurring opinion: “[O]ne might think that Walt Disney Pictures could sue a State (or anyone else) for hosting an unlicensed screening of the studio’s 2003 blockbuster film, Pirates of the Caribbean (or any one of its many sequels). Yet the Court holds otherwise…. But recognizing that my longstanding view has not carried the day, and that the Court’s decision in Florida Prepaid controls this case, I concur in the judgment.”

Justice Breyer aptly captures this author’s view of the oddity of the Court’s majority opinion, which unhesitatingly discards the rights of the infringed videographer Frederick Allen in favor of the rights of North Carolina as a sovereign state, even though a statute enacted by Congress says that Mr. Allen should have his day in court.