Doing the Sovereign Immunity Shuffle: Inside the Copyright Office Report on State Infringements

Stephen Carlisle September 2, 2021

In the case of Allen v. Cooper, ¹ the Supreme Court of the United States ruled that the State of North Carolina had sovereign immunity from liability for copyright infringement lawsuits, and that Congress’ attempt to remove that immunity was unconstitutional. ²

There, the Court stated that the evidence of copyright infringement by State actors was fairly underwhelming, calling it “scarcely more impressive than what the Florida Prepaid Court saw…only a dozen possible examples of state infringement.” ³

However, the Court did suggest that Congress could fashion a remedy based upon a legislative record which supported such an action. ⁴ It suggested that Congress may validly abrogate sovereign immunity if it has a sufficient record of unconstitutional infringement by states. ⁵

To this end, the Copyright Office filed a Notice of Inquiry (NOI) inviting public comments in an attempt to determine whether such a legislative record was possible. ⁶ According to the full report, published August 31, 2021:

“On June 3, 2020, the Office issued a notice of inquiry inviting written comments and empirical research on (1) specific instances of infringing conduct committed by a state government entity, officer, or employee; (2) the extent to which state sovereign immunity affects the licensing or sale of copies of copyrighted works to state entities; (3) the remedies available for copyright owners when states infringe their works; (4) the metrics Congress should use to determine whether infringement by state entities is common or infrequent; (5) whether the prevalence of infringement by state entities has increased in recent years; (6) how different state entities handle claims of infringement; and (7) any other pertinent issues the Office should consider when conducting the study.

On June 24, 2020, the Office invited a second round of written comments and any additional empirical research. In response, the Office received forty-eight responsive comments from individuals, copyright practitioners, organizations, and state entities.” ⁷

In addition, public roundtables were held (via Zoom) on December 11, 2020. ⁸

Unsurprisingly, the majority of State actors most often cited for committing copyright infringement were State run universities and educational institutions, accounting for 58% of all cases. ⁹ Literary works were the most often type of work infringed (58%), followed by pictorial graphic or sculptural works (30%).

Also unsurprisingly, the States were unsympathetic to the claims of copyright owners. As the report recounts:

“State representatives raised concerns that these lists ‘are not entirely probative for the Copyright Office’s inquiry.’ They identified three potential deficiencies. First, they observed that the lists are not accompanied by ‘any proof, or evidence, or a determination that, setting aside 11th Amendment sovereign immunity, the state defendants did not have meritorious, or at least plausible, defenses that, had they been fully litigated, . . . may have prevailed.’ They noted that, although a case may be dismissed based on sovereign immunity, ‘there are typically many meritorious defenses that are raised . . . aside from sovereign immunity,’ which ‘need to be carefully looked at to adequately probe whether there is a pervasive pattern or practice of infringement. To that point, the University of Michigan Library highlighted that ‘several of the cases were dismissed on grounds other than sovereign immunity, such as statute of limitations.’” ¹⁰

The problem with this line of reasoning is that many of the grounds that a case might get dismissed, such as failure to register or statute of limitations, have nothing to do with whether actionable or intentional infringement occurred. They are simply bars to the suit proceeding. Such is the case with sovereign immunity. You never get to try the merits of the case. Sovereign immunity stops the case in its tracks. If you’ve got sovereign immunity, you don’t need a “meritorious defense.” Consider that of all the cases cited in the report that were filed and a written opinion was issued, a full 60% of those cases were dismissed on sovereign immunity grounds. ¹¹ Only one of those decisions mentioned fair use. ¹²

Or consider the filings of the major newspapers. In 2017, they discovered that the California Public Employee’s Retirement System (“CalPERS”) was massively reproducing their news articles for some time. They found that CalPERS

“‘was copying, republishing, and distributing thousands of protected news articles without having acquired a license or authorization from the publishers.’ These commenters alleged that CalPERS maintained a publicly accessible website where it reproduced, without authorization, full-text news articles, and that CalPERS sent daily emails to its senior officials and stakeholders with curated links to full-text articles reproduced on the CalPERS website.” ¹³

“‘In total, during the eight-year period, CalPERS republished approximately 53,000 news articles from roughly 4,500 news organizations,’ including ‘over 9,000 full-text articles from The Wall Street Journal, almost 6,900 from The New York Times, over 5,500 from The Los Angeles Times, almost 3,900 from The Sacramento Bee, and almost 2,000 from The Washington Post.’” ¹⁴

It is worth noting that the Wall Street Journal, Washington Post and New York Times all operate behind paywalls.

The response of CalPERS? They took down the website and asserted sovereign immunity. ¹⁵

No suits were filed. However, three news outlets did reach settlement agreements with CalPERS, receiving far less than the “tens of Millions of dollars” in licensing fees owed to Dow Jones for the over 9,000 articles it infringed on. ¹⁶

In the wake of the SCOTUS ruling in Allen, that number is now probably zero.

Despite all of this, the Copyright Office dances around on the ultimate question.

“In light of these precedents, we are unable to conclude with certainty that the evidence provided in this study would be held sufficient to establish a pattern of unconstitutional conduct. Although the record includes more examples of potential infringement than in Florida Prepaid and Allen, it falls short of the evidence of pervasive unconstitutional conduct by state entities in Lane and Hibbs.” ¹⁷

But then states:

“Given that the evidence gathered here far exceeds that underlying the CRCA, Congress may still choose to proceed with adopting new abrogation legislation. In light of the foregoing concerns, however, there is a material risk that a court could find even this more robust record insufficient to meet the constitutional abrogation standard. The Office nevertheless continues to believe that infringement by state entities is an issue worthy of congressional action.” ¹⁸

And finally this:

“The Office appreciates the concerns of the universities, libraries, and other state entities represented in this study, and their implementation of policies and educational programs to ensure respect for copyright. We note that these entities will generally be able to invoke protection from non-meritorious infringement suits under the Copyright Act’s exceptions and limitations, including fair use, exceptions for reproduction by libraries and archives, and limitations on remedies. State users of copyrighted works, however, are not limited to these institutions. Other state entities, ranging from athletic departments to tourism offices to radio stations, may make use of copyrighted works for a variety of purposes, including some that affect the works’ markets. While the Office received little evidence relating to these types of entities, there would seem to be little justification for immunizing them from damages if they intentionally engage in the same conduct for which a private party could be held liable.” ¹⁹

Like CalPERS.