IP Law Daily Pirate ship videographer secures High Court review of Copyright Remedy Clarification Act’s constitutionality
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Monday, June 3, 2019

Pirate ship videographer secures High Court review of Copyright Remedy Clarification Act’s constitutionality

By Peter Reap, J.D., LL.M.

The U.S. Supreme Court will review a decision by the Fourth Circuit holding that North Carolina and its officials were immune from the videographer’s copyright infringement suit, in part, because the Act did not validly abrogate state sovereign immunity.

The U.S. Supreme Court has granted certiorari to review the U.S. Court of Appeals in Richmond’s ruling that North Carolina, the North Carolina Department of Natural and Cultural Resources, and various state officials acting in their official capacities—who were sued in a copyright infringement action brought by a videographer and his affiliate who produced photos and videos depicting a salvaged ship of Blackbeard the pirate—were entitled to Eleventh Amendment immunity from suit in federal court. Although the Fourth Circuit’s decision also rested on holdings that North Carolina did not waive its immunity and an Ex Parte Young exception to immunity did not apply, the sole question presented by the petition asks whether Congress validly abrogated state sovereign immunity via the Copyright Remedy Clarification Act, which the appellate court held was an unconstitutional abrogation of state sovereign immunity.

Background. In 1717, the pirate Blackbeard captured a French merchant vessel and renamed her Queen Anne’s Revenge. Blackbeard armed the Revenge with 40 cannons and made her his flagship. But the following year, the Revenge ran aground about a mile off the coast of Beaufort, North Carolina, and was abandoned.

On November 21, 1996, Intersal, a private research and salvage firm operating under a permit issued by North Carolina, discovered the wreck of the Revenge, and on September 1, 1998, Intersal, along with Maritime Research Institute, an affiliated entity, entered into a 15-year salvage agreement with the Department. Under the agreement, Intersal and Maritime Research acknowledged North Carolina’s ownership of the shipwreck and the ship’s artifacts, and North Carolina acknowledged Intersal’s and Maritime Research’s salvage rights. The agreement provided that "Except as provided in paragraph 20 and this paragraph, Intersal shall have the exclusive right to make and market all commercial narrative (written, film, CD Rom, and/or video) accounts of project related activities undertaken by the Parties."

The agreement made an exception for the creation of a "non commercial educational video and/or film documentary" and provided that the parties would cooperate in making such an educational documentary. And Paragraph 20 provided that "The Department shall have the right to authorize access to, and publish accounts and other research documents relating to, the artifacts, site area, and project operations for non commercial educational or historical purposes."

Intersal retained plaintiff Nautilus Productions, co-plaintiff Frederick Allen’s production company, to document the salvage of the Revenge. Allen registered 13 copyrights in his video works with the U.S. Copyright Office, each copyright covering a year’s worth of footage. In 2013, Allen and Nautilus took the position that the Department’s publication of Allen’s work on the Internet without his consent infringed Allen’s copyrights, leading to a settlement agreement dated October 15, 2013. The 2013 Settlement Agreement divided Allen and Nautilus’s video and photographic documentation, treating some of the footage as "commercial documentaries" and some as "non-commercial media," for purposes of clarifying the parties’ respective rights. Finally, the 2013 Settlement Agreement addressed the video footage and still photographs as public records.

Following the settlement, Allen and Nautilus alleged that the Department "resumed infringing [Allen’s] copyrights" by "publish[ing] ... and/or display[ing]" various "works" on the Internet. Allen and Nautilus commenced this action in December 2015, naming as defendants the State of North Carolina, the Department, the Governor, and six officials in the Department, among others. Except for the Governor, who was sued only in his official capacity, each of the individual defendants was sued in both his or her official and individual capacities. The district court rejected North Carolina’s claims of immunity.

Fourth Circuit decision. On appeal, the Fourth Circuit reversed, holding that the defendants did not waive their immunity in a settlement agreement with the plaintiffs; the federal Copyright Remedy Clarification Act did not abrogate their immunity; and Ex parte Young did not suffice to provide the plaintiffs with a valid exception to their immunity. Further, the plaintiffs’ claims against the state officials in their individual capacities were precluded by qualified immunity and by legislative immunity for their alleged involvement in enacting an allegedly unconstitutional state statute relating to shipwrecks.

As to the Copyright Remedy Clarification Act (CRCA), the plaintiffs argued that Congress validly enacted the Act because it properly invoked Article I’s Patent and Copyright Clause, which authorizes Congress to "secur[e] for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries." But under Supreme Court precedent it was clear that Congress cannot rely on the enumerated power in Article I over copyright to compel a State to litigate copyright cases in a federal court, the appellate court reasoned.

The plaintiffs also argued that Congress validly enacted the CRCA under the authority granted to it in Section 5 of the Fourteenth Amendment, which affords Congress the "power to enforce, by appropriate legislation," the Amendment’s substantive guarantees. The Supreme Court has interpreted Section 5 as permitting Congress to abrogate sovereign immunity for "a somewhat broader swath of [state] conduct, including that which is not itself forbidden by the [Fourteenth] Amendment," the appellate court noted. Bd. of Trustees of Univ. of Ala. v. Garrett, 531 U.S. 356, 365 (2001). However, in light of the competing equities at stake, it has circumscribed Congress’s authority to do so in two respects. 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 congruent and proportional to the Fourteenth Amendment injury to be prevented or remedied.

In enacting the CRCA, Congress satisfied neither requirement, the Fourth Circuit determined. First, in enacting the Act, Congress relied on the Copyright Clause in Article I of the Constitution, rather than Section 5 of the Fourteenth Amendment. Second, Congress also did not, as required, limit the scope of the CRCA to enforcement of rights protected by the Fourteenth Amendment. Rather, in abrogating sovereign immunity, Congress used language that sweeps so broadly that the Act cannot be deemed a congruent and proportional response to the Fourteenth Amendment injury with which it was confronted. Thus, the CRCA’s wholesale abrogation of sovereign immunity for claims of copyright infringement is grossly disproportionate to the relevant injury under the Fourteenth Amendment, and therefore the abrogation cannot be sustained, the court explained, joining the numerous other courts to have considered this issue and finding the Act invalid.

Petition. In their petition, the plaintiffs contend that the CRCA validly subjects states to suit pursuant to Congress’s Article 1 power. Article I expressly empowers Congress "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." Authority to abrogate States’ sovereign immunity for infringing these federal protections is part and parcel of this established Article I power and its animating purpose, the petition reasons. Only by surrendering their sovereign immunity did the states empower Congress to secure uniform, nationwide protection for federally-conferred patents and copyrights, consistent with the constitutional design.

Delving into the history of the Constitutional Convention, the petition argues that the text and history of the constitution’s intellectual property clause—granting Congress the power to "secur[e] for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries"—show that the plan of the Convention was to empower Congress to bestow federal patents and copyrights and to secure uniform protection for them throughout the United States. It was indispensable to this plan that the States surrender their sovereign immunity within a discrete, exclusive federal realm.

The Fourth Circuit, however, neglected to analyze specific indicia of whether the Intellectual Property Clause entails authority for Congress to abrogate state sovereign immunity, the petition asserts. "The Fourth Circuit thereby erred, and erred consequentially, for proper examination of the relevant Article I power should lead to recognition that Congress has authority to legislate precisely as it did via the CRCA," the petition contends.

The CRCA also validly subjects states to suit pursuant to Congress’s power to enforce the Fourth Amendment, according to the petition. The CRCA was a valid exercise of Congress’s power to abrogate state sovereign immunity pursuant to Section 5 of the Fourteenth Amendment. Section 5 imbues Congress with "power to enforce, by appropriate legislation, the provisions of this article," including the clause prohibiting States from "depriv[ing] any person of life, liberty, or property, without due process of law." Those due process protections extend to copyright and the Supreme Court has made clear that congress is authorized to abrogate state sovereign immunity through Section 5.

The Fourth Circuit erroneously concluded that the legislative record behind the CRCA was "materially similar" to the record the Supreme Court considered in Florida Prepaid Postsecondary Education Expense Board v. College Savings Bank, 527 U.S. 627 (1999), the petition argues. That conclusion was wrong because the legislative record of state copyright infringement was much more extensive than that underlying the Patent Remedy Act considered in Florida Prepaid. Additionally, there are critical differences between patent and copyright law that distinguish the CRCA. By ignoring these differences, the Fourth Circuit erred and wrongfully denied Congress its discretion to exercise Section 5 powers.

The petition in Allen v. Cooper, Dkt. No. 18-877, was filed January 4, 2019, and certiorari was granted June 3, 2019.

Attorneys: Todd Anten (Quinn Emanuel Urquhart & Sullivan, LLP) for Frederick L. Allen and Nautilus Productions, LLC.

Companies: Nautilus Productions, LLC

MainStory: TopStory Copyright

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