Sovereign Immunity Study: Notice and Request for Public Comment

Cited as85 FR 34252
CourtLibrary Of Congress, U.s. Copyright Office
Publication Date03 Jun 2020
Record Number2020-12019
Federal Register, Volume 85 Issue 107 (Wednesday, June 3, 2020)
[Federal Register Volume 85, Number 107 (Wednesday, June 3, 2020)]
                [Pages 34252-34256]
                From the Federal Register Online via the Government Publishing Office []
                [FR Doc No: 2020-12019]
                LIBRARY OF CONGRESS
                U.S. Copyright Office
                [Docket No. 2020-9]
                Sovereign Immunity Study: Notice and Request for Public Comment
                AGENCY: Copyright Office, Library of Congress.
                ACTION: Notice of inquiry.
                SUMMARY: The U.S. Copyright Office is initiating a study to evaluate
                the degree to which copyright owners are experiencing infringement by
                state entities without adequate remedies under state law, as well as
                the extent to which such infringements appear to be based on
                intentional or reckless conduct. The Office seeks public input on this
                topic to assist it in preparing a report to Congress.
                DATES: Written comments are due on or before August 3, 2020.
                ADDRESSES: For reasons of government efficiency, the Copyright Office
                is using the system for the submission and posting of
                public comments in this proceeding. All comments are therefore to be
                submitted electronically through Specific instructions
                for submitting comments are available on the Copyright Office website
                at If electronic
                submission of comments is not feasible due to lack of access to a
                computer and/or the internet, please contact the Office, using the
                contact information below, for special instructions.
                FOR FURTHER INFORMATION CONTACT: Regan A. Smith, General Counsel and
                Associate Register of Copyrights, [email protected]; Kevin R. Amer,
                Deputy General Counsel, [email protected]; or Mark T. Gray, Attorney-
                Advisor, [email protected]. They can be reached by telephone at 202-707-
                SUPPLEMENTARY INFORMATION: On March 23, 2020, the Supreme Court issued
                its decision in Allen v. Cooper,\1\ holding that the Copyright Remedy
                Clarification Act of 1990 (``CRCA''), which attempted to make states
                subject to liability for copyright infringement to the same extent as
                other parties, did not validly abrogate states' sovereign immunity
                against suit. Following the decision, Senators Thom Tillis and Patrick
                Leahy sent a letter to the Copyright Office requesting that the Office
                ``research this issue to determine whether there is sufficient basis
                for federal legislation
                [[Page 34253]]
                abrogating State sovereign immunity when States infringe copyrights.''
                 \1\ 140 S. Ct. 994 (2020).
                 \2\ Letter from Sens. Thom Tillis & Patrick Leahy to Maria
                Strong, Acting Register of Copyrights, U.S. Copyright Office at 1
                (Apr. 28, 2020), available at (``Request Letter'').
                I. Background
                a. The Copyright Remedy Clarification Act
                 Under the doctrine of sovereign immunity, ``a federal court
                generally may not hear a suit brought by any person against a
                nonconsenting State.'' \3\ The Fourteenth Amendment to the
                Constitution, however, ``can authorize Congress to strip the States of
                immunity.'' \4\ Section 1 of that Amendment provides that states may
                not ``deprive any person of life, liberty, or property, without due
                process of law,'' \5\ and section 5 gives Congress the ``power to
                enforce, by appropriate legislation,'' those prohibitions,\6\ including
                by subjecting states to suit in federal court.\7\
                 \3\ Allen, 140 S. Ct. at 1000.
                 \4\ Id. at 1003.
                 \5\ U.S. Const. amend. XIV, sec. 1.
                 \6\ U.S. Const. amend. XIV, sec. 5.
                 \7\ Allen, 140 S. Ct. at 1003.
                 Enacted on November 15, 1990, the CRCA amended the Copyright Act to
                expressly provide that states are not immune from suit for copyright
                infringement.\8\ Congress adopted the legislation in response to a 1985
                Supreme Court decision, Atascadero State Hospital v. Scanlon, in which
                the Court held that to abrogate state sovereign immunity under the
                Fourteenth Amendment, Congress must use ``unequivocal'' language making
                its intention explicit.\9\ At the time, the Copyright Act was silent on
                whether states were subject to liability,\10\ although some pre-
                Atascadero courts had held that Congress intended states to be subject
                to infringement claims.\11\ Shortly after the Atascadero decision,
                Congress asked then-Register of Copyrights Ralph Oman to study what
                ``practical problems'' copyright owners faced in enforcing their rights
                against state governments.\12\ The Office subsequently issued a request
                for public comment \13\ and received approximately forty responses.\14\
                Most comments were submitted by copyright owners, some of whom
                expressed concern about the risk of future infringement by state
                entities, while others discussed past acts of infringement committed by
                states.\15\ The Office summarized these comments in a public report
                (the ``Oman Report''), which ultimately recommended that Congress
                ``amend the Copyright Act . . . to ensure that copyright owners have an
                effective remedy against infringing states.'' \16\
                 \8\ Public Law 101-553, sec. 2(a)(2), 101 Stat. 2749 (1990),
                codified at 17 U.S.C. 511.
                 \9\ 473 U.S. 234, 247 (1985).
                 \10\ See 17 U.S.C. 501(a) (1977) (``Anyone who violates any of
                the exclusive rights of the copyright owner as provided by sections
                106 through 118, or who imports copies or phonorecords into the
                United States in violation of section 602, is an infringer of the
                 \11\ See Mills Music, Inc. v. Arizona, 591 F.2d 1278, 1285 (9th
                Cir. 1979) (affirming copyright damages and attorneys' fees award
                under 1909 Act because language providing for damages against
                infringers was ``sweeping and without apparent limitation,
                suggesting that Congress intended to include states within the class
                of defendants''); Johnson v. Univ. of Va., 606 F. Supp. 321, 324
                (W.D. Va. 1985) (``[B]ased on the Mills Music analysis of the 1909
                Act, and this court's examination of the operative language of the
                1976 Act, the court determines that the 1976 Act waived the states'
                Eleventh Amendment immunity from liability for damages and equitable
                relief for copyright infringements.''). But see Wihtol v. Crow, 309
                F.2d 777, 782 (8th Cir. 1962) (dismissing copyright claim against
                school district on Eleventh Amendment grounds because the district
                was ``an instrumentality of the State of Iowa, constituting a part
                of its educational system and engaged in performing a state
                governmental function under state law and at state expense'').
                 \12\ Letter from Reps. Robert W. Kastenmeier & Carlos Moorhead,
                Subcomm. on Courts, Civil Liberties and the Administration of
                Justice of the H. Comm. on the Judiciary, to Ralph Oman, Register of
                Copyrights, U.S. Copyright Office at 1 (Aug. 3, 1987), reproduced in
                U.S. Copyright Office, Copyright Liability of States and the
                Eleventh Amendment, A Report of the Register of Copyrights (June
                 \13\ Request for Information: Eleventh Amendment, 52 FR 42045
                (Nov. 2, 1987).
                 \14\ The public comments can be viewed at
                 \15\ U.S. Copyright Office, Copyright Liability of States and
                the Eleventh Amendment: A Report of the Register of Copyrights 6
                (June 1988) (``Oman Report'') (``The major concern of copyright
                owners appears to be widespread, uncontrollable copying of their
                works without remuneration''), available at
                The CRCA's legislative history reveals similar concerns about
                prospective infringement. See Copyright Remedy Clarification Act and
                Copyright Office Report on Copyright Liability of States, Hearings
                Before the Subcomm. on Courts, Intellectual Property, and the
                Administration of Justice of the H. Comm. on the Judiciary, 101st
                Cong. 102 (1989) (testimony of Barbara Ringer, former Register of
                Copyrights) (until Atascadero, states believed ``you have got to
                pay,'' but now ``their lawyers are going to tell them you don't have
                to pay,'' and ``gradually, and maybe not so gradually, this free
                ride will become quite the rule rather than the exception unless you
                do something''); Copyright Remedy Clarification Act, Hearing Before
                the Subcomm. on Patents, Copyrights and Trademarks of the S. Comm.
                on the Judiciary, 101st Cong. 69 (1989) (prepared statement of
                Copyright Remedies Coalition) (expressing concern that ``states may
                well confuse insulation from damages with full immunity from any
                copyright liability, causing them to believe that their activities
                are beyond the reach of the Copyright Act'').
                 \16\ Oman Report at 104. The Office's specific legislative
                recommendations turned on whether Congress could abrogate state
                immunity under Article I, section 8, clause 8 of the Constitution
                (the ``Intellectual Property Clause''). The Supreme Court had not
                yet addressed that question. Shortly before the report was
                completed, however, the Court granted certiorari in United States v.
                Union Gas Co., 832 F.2d 1343, 1356 (3d Cir. 1987), certiorari
                granted sub nom. Pennsylvania v. Union Gas Co., 485 U.S. 958 (1988),
                in which the Third Circuit had held that Article I could be a basis
                for abrogation. The Oman Report recommended that if the Supreme
                Court affirmed that decision, Congress should revise section 501 of
                the Copyright Act to ``clarify its intent to abrogate states'
                Eleventh Amendment Immunity pursuant to its [Intellectual Property
                Clause] power.'' Oman Report at 104. Otherwise, the Report
                recommended that Congress ``amend the jurisdictional provision in 28
                U.S.C. 1338(a), to provide that where states are defendants, private
                individuals may sue them in state court for copyright damages.'' Id.
                at 104-05.
                 After the Office issued its report, the CRCA was introduced in
                Congress, and Congress held hearings on the issue of state
                infringement. The final legislation amended the Copyright Act to
                provide that ``[a]ny State, any instrumentality of a State, and any
                officer or employee of a State or instrumentality of a State acting in
                his or her official capacity, shall not be immune, under the Eleventh
                Amendment . . . or under any other doctrine of sovereign immunity, from
                suit in Federal court by any person'' for copyright infringement.\17\
                It further provided that ``[a]ny State . . . shall be subject to the
                provisions of this title in the same manner and to the same extent as
                any nongovernmental entity.'' \18\
                 \17\ 17 U.S.C. 511(a); see also id. at 511(b) (``In a suit
                described in subsection (a) for a violation described in that
                subsection, remedies (including remedies both at law and in equity)
                are available for the violation to the same extent as such remedies
                are available for such a violation in a suit against any public or
                private entity other than a State, instrumentality of a State, or
                officer or employee of a State acting in his or her official
                 \18\ Id. at 501(a).
                b. Florida Prepaid v. College Savings Bank
                 Nine years after enactment of the CRCA, the Supreme Court issued an
                opinion in Florida Prepaid Postsecondary Education Expense Board v.
                College Savings Bank,\19\ which addressed whether Congress had validly
                abrogated states' immunity from patent infringement suits when it
                adopted the Patent Remedy Act. In Florida Prepaid, the Court set out a
                number of requirements that Congress needed to meet for such abrogation
                to constitute a valid exercise of Congress's authority under section 5
                of the Fourteenth Amendment. First, Congress was required to identify a
                ``pattern of patent infringement'' by state governments.\20\ Second,
                the infringement must constitute a violation of the Fourteenth
                Amendment such that patent owners
                [[Page 34254]]
                were being deprived of property ``without due process of law.'' \21\
                The Court explained that such a deprivation occurs ``only where the
                State provides no remedy, or only inadequate remedies, to injured
                patent owners for its infringement of their patent.'' \22\ The Court
                cautioned that, because states do not violate due process when they
                commit a ``negligent act that causes unintended injury to a person's
                property,'' patent infringement that was merely negligent rather than
                intentional or reckless did not violate the Fourteenth Amendment.\23\
                Third, there must be ``congruence and proportionality'' between the
                constitutional violations Congress seeks to remedy and the means
                adopted for that purpose.\24\
                 \19\ 527 U.S. 627 (1999).
                 \20\ Id. at 640.
                 \21\ Id. at 642.
                 \22\ Id. at 643.
                 \23\ Id. at 645.
                 \24\ Id. at 639 (quoting City of Boerne v. Flores, 521 U.S. 507,
                520 (1997)).
                 The Court in Florida Prepaid struck down the Patent Remedy Act for
                failure to meet these requirements. It concluded that Congress had not
                identified a pattern of infringement because (1) Congress had ``little
                evidence of infringing conduct'' by state actors; \25\ (2) Congress
                ``barely considered'' the adequacy of state-law remedies for patent
                infringement by the state; \26\ (3) the legislative record did not
                reflect a pattern of intentional or reckless infringements, but instead
                consisted only of ``a handful of instances of state patent infringement
                that do not necessarily violate the Constitution''; \27\ and (4) the
                legislation was not limited to ``cases involving arguable
                constitutional violations, such as where a State refuses to offer any
                state-court remedy,'' or cases where the infringement was not negligent
                or committed pursuant to state policy.\28\ After the Court's decision,
                Congress considered, but did not pass, legislation that would have
                conditioned states' ability to recover damages for infringement of
                their own intellectual property on their waiver of immunity to
                infringement damages.\29\
                 \25\ Id. at 640-41.
                 \26\ Id. at 643-44.
                 \27\ Id. at 645-66.
                 \28\ Id. at 646-47.
                 \29\ See Sovereign Immunity and Protection of Intellectual
                Property, Hearing Before Senate Comm. on the Judiciary, 107th Cong.
                3-4 (Feb. 27, 2000) (prepared statement of Sen. Patrick Leahy),
       (discussing Intellectual Property Protection
                Restoration Act of 2001 and stating that ``no condition could be
                more reasonable or proportionate than the condition that in order to
                obtain full protection for your federal intellectual property
                rights, you must respect those of others''); Intellectual Property
                Restoration Act of 2003, Hearing Before House Subcomm. on Courts,
                the internet, and Intellectual Property, 108th Cong. (June 17, 2003)
                (prepared statement of Marybeth Peters, Register of Copyrights),
                available at
                (stating that proposed legislation ``provides significant incentives
                for a State to waive its immunity, but does so in a way that is
                inherently proportional and fair to the States and copyright
                c. Allen v. Cooper
                 This year, the Supreme Court decided Allen v. Cooper, a case
                considering the validity of the CRCA's abrogation of state immunity. In
                Allen, a videographer brought an infringement action against North
                Carolina after the state published his videos and photographs of a
                sunken pirate ship online without authorization. North Carolina
                contended that it was immune to suit and that the CRCA failed to
                properly abrogate its immunity. Applying the analysis from Florida
                Prepaid, the Court held that the CRCA failed the congruence and
                proportionality test for substantially the same reasons that applied to
                the Patent Remedy Act.\30\ With respect to the legislative record, the
                Court found the evidence of copyright infringement supporting the CRCA
                to be ``scarcely more impressive than what the Florida Prepaid Court
                saw,'' amounting to ``only a dozen possible examples of state
                infringement.'' \31\ The Court also pointed to congressional testimony
                and statements by Members of Congress suggesting that copyright
                infringement by states currently was not a widespread problem.\32\
                 \30\ Allen, 140 S. Ct. at 999.
                 \31\ Id. at 1006.
                 \32\ Id.
                 The Court further held that Congress had failed to make a
                sufficient showing of unconstitutional infringement by states. Under
                its precedent, the Court noted, ``a merely negligent act does not
                `deprive' a person of property,'' and therefore ``an infringement must
                be intentional, or at least reckless, to come within the reach of the
                Due Process Clause.'' \33\ In the case of the CRCA, only two of the
                infringements cited in the legislative record appeared to be
                intentional.\34\ Moreover, the record contained ``no information about
                the availability of state-law remedies for copyright infringement (such
                as contract or unjust enrichment suits)--even though they might
                themselves satisfy due process.'' \35\ The Court thus concluded that
                the balance struck by the CRCA ``between constitutional wrong and
                statutory remedy'' was ``askew.'' \36\ The ``exceedingly slight''
                evidence of Fourteenth Amendment injury, combined with the fact that
                the statute extended to ``every infringement case against a State,''
                meant that ``the law's `indiscriminate scope' [was] `out of proportion'
                to any due process problem.'' \37\
                 \33\ Id. at 1004. The Court had previously reserved, but not
                decided, the question ``whether reckless conduct suffices'' to
                violate due process. Id. (citing Daniels v. Williams, 474 U.S. 327,
                334 n.3 (1986)).
                 \34\ Id. at 1006.
                 \35\ Id. at 1006-07.
                 \36\ Id. at 1007.
                 \37\ Id. (quoting Florida Prepaid, 527 U.S. at 646-47).
                 At the conclusion of the opinion, the Court observed that its
                decision ``need not prevent Congress from passing a valid copyright
                abrogation law in the future.'' \38\ It noted that in adopting the
                CRCA, ``Congress acted before this Court created the `congruence and
                proportionality' test,'' and therefore it ``likely did not appreciate
                the importance of linking the scope of its abrogation to the redress or
                prevention of unconstitutional injuries--and of creating a legislative
                record to back up that connection.'' \39\ Under that standard, ``if
                [Congress] detects violations of due process, then it may enact a
                proportionate response,'' and [t]hat kind of tailored statute can
                effectively stop States from behaving as copyright pirates.'' \40\
                 \38\ Id.; see also id. at 1009 (Breyer, J., concurring) (``One
                might . . . expect that someone injured by a State's violation of
                [its] duty [not to infringe copyright] could `resort to the laws of
                his country for a remedy,' . . . . Or more concretely, one 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).''
                (citation omitted)).
                 \39\ Id. at 1007.
                 \40\ Id.
                d. Current Study
                 On April 28, 2020, Senators Thom Tillis and Patrick Leahy sent a
                letter to the Copyright Office noting that the Allen decision has
                ``created a situation in which copyright owners are without remedy if a
                State infringes their copyright and claims State sovereign immunity,''
                and expressing concern ``about the impact this may have on American
                creators and innovators.'' \41\ The letter states that the Senators
                ``have heard from affected copyright owners that in recent years State
                infringements of copyright have become much more common.'' \42\ To
                determine whether there is a sufficient basis for federal legislation,
                the letter asks that the Office ``study the extent to which copyright
                owners are experiencing infringements by state entities without
                adequate remedies under state law. As part of this analysis, the Office
                should consider the
                [[Page 34255]]
                extent to which such infringements appear to be based on intentional or
                reckless conduct.'' \43\ The letter requests that the Office provide a
                public report summarizing the findings of this study, as well as the
                facts and analyses upon which those findings are based, by April 30,
                 \41\ Request Letter at 1.
                 \42\ Id. at 2.
                 \43\ Id.
                 \44\ Id. Senators Tillis and Leahy also sent a letter to the
                Patent and Trademark Office requesting a study of patent and
                trademark infringement by state entities. See Letter from Sens. Thom
                Tillis & Patrick Leahy to Andrei Iancu, Director, U.S. Patent and
                Trademark Office (Apr. 28, 2020).
                 Pursuant to this request, the Office is seeking public input in
                multiple phases. The Office is providing 60 days for written comments
                from interested parties on the topics outlined below. To fulfill the
                request from Congress and the requirements of the Court, the Office
                seeks factual evidence and other verifiable information to support this
                inquiry. For each question, to the extent available, please include
                empirical data or other quantitative analysis in your response. If
                describing a litigation matter, please include information sufficient
                for the Office to identify such matter, such as the relevant court,
                docket number, asserted claims, and dates. As applicable, the Office
                encourages commenters to append relevant materials, such as pleadings,
                opinions, or other documentary evidence, in support of their comments.
                If participants currently gathering empirical research and analyses
                find themselves unable to complete them within the 60-day period for
                submissions, they are encouraged to contact the Office promptly,
                describing the nature of the research and indicating the time required
                for completion. To the extent possible, the Office will seek to
                accommodate such submissions by providing an additional comment period
                limited to the provision of empirical data at a later date, but
                encourages all commenters to meet the noticed deadline if possible, so
                that the Office may fully consider the submissions in light of the
                congressional deadline.
                 After this comment period has closed, the Office intends to host
                one or more public roundtables to seek additional input, potentially
                virtually. The Office may request further written comments on
                particular issues discussed in response to this notice and/or at the
                public roundtables.
                II. Subjects of Inquiry
                 The Copyright Office invites written comments on the subjects
                below. A party choosing to respond to this Notice of Inquiry need not
                address every subject, but the Office requests that responding parties
                clearly identify and separately address each subject for which a
                response is submitted. The Office also requests that commenters explain
                their interest in the study and, with respect to each answer, the basis
                for their knowledge (e.g., the commenter is a copyright owner, artist,
                academic, or state official).
                 1. Please provide information regarding specific instances of
                infringing conduct committed by a state government entity, officer, or
                employee, including, where relevant:
                 a. The work(s) infringed;
                 b. The act(s) of alleged infringement;
                 c. When the infringement occurred;
                 d. The state actor(s) who committed the infringement;
                 e. Whether the infringement was intentional or reckless, and the
                basis for that conclusion;
                 f. Whether the infringement was committed pursuant to a state
                 g. Whether the state was contacted by or on behalf of the copyright
                owner in response to the infringement, and if so, how the state
                 h. Whether a lawsuit was filed as a result of the infringement, and
                if so, where the case was filed, what claim(s) were brought regarding
                the infringement, whether the case remains pending, and if not, how it
                was resolved; and
                 i. If a lawsuit was not filed, why the copyright owner chose not to
                do so, including whether it attempted to resolve the matter privately
                in lieu of litigation, and any relevant details with respect to those
                 2. To what extent does state sovereign immunity affect the
                licensing or sale of copies of copyrighted works to state entities? For
                 a. Do copyright owners provide different payment or licensing terms
                in transactions with state entities than are provided in transactions
                with other parties?
                 b. Have copyright owners changed aspects of their sales or
                licensing practices as a result of state sovereign immunity?
                 c. Do different states or state entities take different approaches
                to working with copyrighted material? Are there particular states that
                more frequently infringe?
                 3. What remedies are available for copyright owners when states
                infringe their works?
                 a. To what extent did copyright owners file suits under the
                Copyright Act against state entities prior to the Supreme Court's
                decision in Allen v. Cooper?
                 b. In your opinion, does the availability of injunctive relief
                against state officials provide an adequate remedy to address the needs
                of copyright owners in response to instances of state copyright
                 c. To what extent are there state law causes of action that may
                provide a remedy for copyright infringements by state entities? Are
                there state court cases in which a copyright owner has been awarded a
                judgment on such a claim?
                 d. To the extent state law provides a cause of action relevant to
                copyright infringement, how do the elements of the cause of action and/
                or available remedies differ from those applicable to claims under the
                Copyright Act?
                 e. In your opinion, are those remedies adequate to address the
                needs of copyright owners in response to instances of state copyright
                 4. How can Congress determine whether copyright infringement by a
                state is common or infrequent? What metrics should be used in making
                such a determination?
                 5. Has the prevalence of infringement by states increased in recent
                 a. What empirical evidence is available to determine whether and to
                what extent there has been a change over time?
                 b. To what extent, if any, have instances of actual or threatened
                infringement by states increased since the decision in Allen, or can
                they be expected to increase?
                 6. How do different states handle claims of infringement? Please
                discuss, as relevant:
                 a. Whether any state agencies carry insurance policies that would
                cover infringement by a state employee, and if so, whether those
                insurance policies distinguish between infringement that is
                intentional, reckless, or negligent;
                 b. Any laws, regulations, or policies that state entities have
                adopted to minimize the likelihood of, or to provide a remedy for,
                copyright infringement by a state entity;
                 c. How frequently copyright owners claim a state actor has
                infringed their rights, either privately or in litigation;
                 d. How state entities typically respond to credible claims of
                copyright infringement, including any formal or informal policies
                providing for negotiations with or payment to the copyright owner, as
                well as whether the Attorney General's office is notified of such
                 e. What state entities are eligible to assert sovereign immunity as
                a defense to copyright infringement claims;
                 f. Whether state entities have the right to waive sovereign
                immunity as a defense to an infringement lawsuit in
                [[Page 34256]]
                federal court, and what authority permits or prevents such waiver; and
                 g. Whether any states record and/or track copyright infringement
                claims received by state entities.
                 7. Please identify any pertinent issues not referenced above that
                the Copyright Office should consider in conducting its study.
                 Dated: May 29, 2020.
                Regan A. Smith,
                General Counsel and Associate Register of Copyrights.
                [FR Doc. 2020-12019 Filed 6-2-20; 8:45 am]
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