States Win Some and Lose Some on Copyright Front at Supreme Court This Term

Allen spent more than a year creating photos and videos of the wreckage, and Allen indisputably owned the copyright interests in his works, which he timely registered with the U.S. Copyright Office. The dispute arose when, without Allen's permission, North Carolina published Allen's works online.

Allen sued North Carolina for copyright infringement, and the state countered that, as a sovereign entity, it was immune from suit because nonconsenting states are generally immune from suit unless Congress, with proper constitutional authority, unequivocally abrogates such immunity. Allen argued that Congress had done just that when enacting the CRCA, which provides:

Any … 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 … for violation of any of the exclusive rights of a copyright owner ….

17 U.S.C. §511(a).

The district court agreed with Allen and refused to dismiss the suit. On interlocutory appeal, the Fourth Circuit reversed, holding that the CRCA was unconstitutional. Because the Fourth Circuit invalidated a federal statute, the Supreme Court granted certiorari.

The Supreme Court began its analysis with its well-established, two-part test for determining whether Congress had properly abrogated state immunity. First, Congress must have enacted "unequivocal statutory language" intending to deprive nonconsenting states of immunity. Second, Congress must have acted under authority of some constitutional provision. Allen, 140 S.Ct. at 1000-01.

The parties agreed that the first prong of the test had been adequately met. The focus, then, turned to whether Congress had acted with proper constitutional authority in enacting the CRCA.

Allen argued that Congress obtained its authority to strip states of their immunity from copyright infringement suits from two sources: 1) Article I, section 8 of the Constitution enabling Congress to enact laws protecting copyrights and patents (the "Intellectual Property Clause"); and 2) Section 5 of the Fourteenth Amendment, giving Congress authority to enact legislation prohibiting states from depriving citizens of property without due process of law. Following its precedent in Florida Prepaid Postsecondary Ed. Expense Bd. v. College Savings Bank, 527 U.S. 627 (1999), the Court held that neither constitutional provision provided Congress with authority to enact the CRCA.

In Florida Prepaid, the Supreme Court analyzed a Patent Act provision (enacted around the same time as the CRCA) intended to abrogate states' sovereign immunity from patent suits. Id. at 636. Following its earlier precedent in Seminole Tribe v. Florida, 517 U.S. 44, 73 (1996), the Court held in Florida Prepaid that Article I of the Constitution could not be used to abrogate states' sovereign immunity from patent suits. See, 527 U.S. at 636. Accordingly, the Allen Court held that Article I could likewise not be used as a vehicle for abrogating states' immunity from copyright suits. Allen, 140 S.Ct. at 1002. While Article I's Intellectual Property Clause gives Congress the power to enact laws to protect patent and copyright interests, the Court has not construed such power to enable Congress to abrogate states' sovereign immunity in those areas.

Allen next argued that Section 5 of the Fourteenth Amendment provided Congress with authority to deprive states of sovereign immunity in the copyright arena. Allen contended that because the Fourteenth Amendment prohibits states from depriving citizens of property without due process, and Section 5 gives Congress power to enforce the Amendment's prohibitions through "appropriate legislation," Congress was empowered to deprive states of sovereign immunity from copyright suits.

The Court again looked to Florida Prepaid, which had similarly considered whether Section 5 of the Fourteenth Amendment enabled Congress to abrogate states' immunity from patent suits. The Court observed that, while Section 5 indeed grants Congress the power to abrogate sovereign immunity, it may only do so if: 1) the legislative record or other evidence demonstrates state conduct violating the Fourteenth Amendment; and 2) the statute is appropriately tailored to address the constitutional injury. Id. at 1004. As it had in Florida Prepaid, the Court found that Congress passed neither test when enacting the CRCA. Id. at 1004-1007; Florida Prepaid, 527 U.S. at 640-47.

As in Florida Prepaid, the legislative record contained scant evidence of states committing copyright infringement, must less in the sort of reckless or intentional manner that would amount to a constitutional deprivation of rights. Allen, 140 S.Ct. at 1006. (The Court noted that mere acts of negligent copyright infringement were not sufficient to deprive one of property and should not be considered. Id. at 1004.) Although Congress had obtained a report from the Copyright Office regarding the scope of state infringement prior to enacting the statute, the report identified fewer than 10 court cases brought against states for copyright infringement and noted that state infringement was "not widespread." Id. at 1006. The absence of a constitutional problem was alone sufficient to strike down the CRCA. But, the Court also noted that even if state infringement was common, Congress did not account for potential state law remedies, and the CRCA was not properly tailored to only address the type of reckless or intentional infringement that would equate to a deprivation of property rights, as opposed to mere negligent conduct. Id. at 1006-07. Accordingly, the Court held the CRCA to be unconstitutional and that states are, for now, immune from copyright infringement suits.

However, the Court made sure to note that its conclusion "need not prevent Congress from passing a valid copyright abrogation law in the future." Id. at 1007. The Court observed that the CRCA was enacted before the Court issued the Florida Prepaid and Seminole Tribe opinions it relied upon to strike the statute down. The Court therefore did not fault Congress for failing to enact a statute that passed constitutional muster, but rather invited Congress to try again.

The implications of Allen are uncertain. While there was limited evidence of state copyright infringement prior to enactment of the CRCA, the CRCA was enacted in a pre-Internet era, when copyright infringement was less widespread and the type of infringement at issue in Allen could not have occurred. With every state agency now having Internet access, state copyright infringement is now likely far more common, and Congress may well be able to establish a sufficient legislative record of such infringement to pass muster. Moreover, there is little justification for states to be permitted to recklessly and intentionally infringe copyrights and few, if any state law remedies, that could address copyright infringement in light of the Copyright Act's broad preemptive scope. See, 17 U.S.C. §301. While one would hope states would not ramp up infringement post-Allen, barring congressional action, state have little disincentive to do so, and some state actors could potentially take advantage of that immunity. Congress should therefore act to pass an appropriately-justified and narrowed version of the CRCA to protect copyright owners from infringement by states.

Georgia v. Public.Resource.Org, Inc.

In Georgia v. Public.Resource.Org, Inc., the Court once again relied on its own precedent to hold that the state of Georgia could not claim copyright interests in statutory annotations created by its legislature. The Court hearkened back to the "government edicts doctrine," which it developed in three 19^th-century cases, including its first-ever copyright case, Wheaton v. Peters, 8 L.Ed. 1055 (1834). However, in its previous form, the doctrine had only been applied to judicial opinions and annotations, as opposed to the type of legislative annotations at issue in Public.Resource.Org.

The genesis of the dispute was legislative annotations in which the state of Georgia claimed copyright ownership. The annotations were prepared by LexisNexis pursuant to a work-for-hire agreement vesting copyright ownership in the state of Georgia. Although Lexis performed much of the work in researching and drafting the annotations, it did so under supervision of a Commission of the Georgia Legislature, which primarily consisted of members of Georgia's House of Representatives. Ultimately, the Georgia Legislature would vote to merge its statutory text with the annotations and publish the final merged product as the "Official Code of Georgia Annotated" (OCGA). Public.Resource.Org., 140 S.Ct. at 1504-05.

After Public.Resource.Org, a nonprofit organization that seeks to facilitate access to government records and publications, published the OCGA on several websites, Georgia sued for copyright infringement based on the unauthorized publication of the annotations. Public.Resource.Org sought a declaratory judgment that the annotations were not subject to copyright protection but were in the public domain. The district court found the annotations to be copyrightable, but the Eleventh Circuit disagreed, citing the government edicts doctrine, and the matter advanced to the Supreme Court.

Although the Supreme Court had not previously applied the doctrine beyond the judicial branch, it concluded that the doctrine should be expanded to include annotations created by legislative bodies. Specifically, the Court held that the government edicts doctrine should apply to works that are: 1) created by judges or legislators; 2) in the course of their judicial or legislative duties. Id. at 1508. The Court held that, although the Commission was not the Legislature, the Commission was created by the Legislature, funded by the Legislature, and largely consisted of members of the Legislature. Accordingly, because the Commission was the author of the annotations, which the Legislature ultimately had to approve before publication, the annotations were created by legislators. Moreover, although the annotations are not themselves enacted into law, the Commission created the annotations as an act of "legislative authority" pursuant to Georgia law, and the Court therefore deemed the annotations to be created in the course of legislative duties. Id. at 1508-09.

On policy grounds, the Court observed that it would be inequitable to enable states to copyright annotations and other legislative materials because it created the risk of having "first class" and "economy" versions of the law. As an example, the Court observed that a citizen who only had access to the statutory text would see a code containing antiquated laws, such as laws prohibiting consensual sexual activities, whereas those who paid for the annotated code would understand that those laws had been invalidated by the courts. The Court viewed this as an unfair opportunity to provide premium legal resources to those who could afford it, while depriving others of access to legislative works. Id. at 1512-13.

The outcome of the case is that legislatures will be hard-pressed to seek copyright protection for materials they create in the course of performing their legislative duties, including annotations, draft bills, and other records of legislative activity. However, the Court made clear that other state bodies, such universities, libraries, and tourism offices, are still free to seek copyright protection for the works they create. Id. at 1510. The federal government and its institutions and employees, on the other hand, are barred by the Copyright Act from seeking copyright protection in any works they create, regardless of branch. See, 17 U.S.C. §§101, 105. Moreover, private companies such as Westlaw and Lexis are still permitted to claim copyright ownership in annotations and other materials that they create, as long as they are not "works made for hire" created on behalf of a judicial or legislative body.

Conclusion

The Supreme Court therefore granted the states, for now, wide latitude to infringe copyrights but deprived the states of the ability to copyright their own legislative works. While the former ruling appears to be a public policy loss and the latter a public policy gain, there is still hope that Congress will take another shot at enacting a new version of the CRCA that passes constitutional muster. Until then, those who feel their copyrights have been infringed by a state should take advantage of their open access to judicial and legislative materials and search for state law remedies to address their claims, to the extent any such remedies are not preempted by the Copyright Act.

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Jason Bloom is partner and head of the Copyright Practice Group at Haynes and Boone, LLP, where he focuses his practice on all aspects of copyright and intellectual property litigation. Jason can be reached at [email protected].