Sovereign Immunity is Defense to Copyright Infringement

Frederick Allen, a videographer, was retained by a private research and salvage firm operating under a permit issued by North Carolina for purposes of obtaining footage of an 18th century wreck of a pirate ship that sank off the North Carolina coast. Allen commenced this action in North Carolina District Court, alleging that North Carolina, through its agencies and officials, violated Allen’s copyrights by publishing his footage of the ship. North Carolina filed a motion to dismiss, asserting sovereign immunity as a defense. Allen, however, argued that this defense was inapplicable under the Federal Copyright Clarification Act of 1990 (“the Act”) and Supreme Court precedent. Agreeing with Allen, the District Court denied North Carolina’s motion to dismiss.

Allen based his assertion that North Carolina could not assert sovereign immunity on a settlement agreement the parties reached in 2013, which provided that, in the event of a breach, Allen may avail himself of “all remedies provided by law or equity.” Judge Niemeyer, writing for the Fourth Circuit, found the agreement lacked the specificity required to effectuate a waiver of sovereign immunity, largely because the agreement made no reference to federal court. Applying Supreme Court precedent, Judge Niemeyer noted that a state must expressly consent to suit in federal court in order to waive sovereign immunity. The Fourth Circuit concluded that the 2013 settlement agreement fell short of the “clear statement” required to establish North Carolina’s consent to a waiver of immunity.

Alternatively, Allen argued that Congress abrogated North Carolina’s sovereign immunity with the enactment of the Copyright Remedy Clarification Act, which purports to bar states from asserting immunity in actions alleging violations of copyrights. The Fourth Circuit, however, agreed with North Carolina’s position that the Act was not a valid exercise of Congressional power. It began by noting that, under Supreme Court precedent, Congress cannot rely solely on its Article 1 powers to abrogate sovereign immunity. Allen, therefore, argued that the Act could be justified under § 5 of the Fourteenth Amendment, which affords Congress the “power to enforce, by appropriate legislation,” the Amendment’s substantive guarantees. The Fourth Circuit rejected Allen’s argument on the grounds that the Act did not 1) purport to rely on its § 5 authority and 2) did not tailor the Act to an identified pattern of conduct made unconstitutional by the Fourteenth Amendment, and was therefore not sufficiently tailored to preventing unconstitutional conduct.

Finally, Adams sought to defeat North Carolina’s assertion of immunity under Ex Parte Young, in which the Supreme Court held that private citizens may sue state officials in federal court for ongoing violations of federal law. North Carolina emphasized, however, that it had removed the allegedly infringing materials from the internet shortly before appearing before the District Court. The Fourth Circuit, therefore, agreed with North Carolina in finding that Allen could not employ the Ex Parte Young exception to sovereign immunity because the only plausible infringement alleged by Allen had ended. The case was reversed and remanded back to the District Court with instructions to dismiss all claims.