Update: Comments from Robert H. Resis, a principal shareholder at Banner & Witcoff, were added to the story.


One of the world’s most famous pirates has been dead for 300 years, but a piracy case involving his sunken treasures is before the nation’s highest court.

Now a group of Chicago lawyers has chimed in, hoping to sink a federal appeals court decision that gives state governments sovereign immunity from copyright-infringement suits.

In this case, a filmmaker sued the state of North Carolina alleging it took his footage of the sunken Queen Anne’s Revenge — Blackbeard’s ship — and posted it online. Later, state lawmakers in Raleigh passed a law declaring photos and videos of shipwrecks as “public record.”

The Intellectual Property Law Association of Chicago has asked the U.S. Supreme Court to reverse course on the ruling, which allowed North Carolina to avoid infringement claims.

Edward Teach, more famously known as “Blackbeard,” stole a French slave ship, renamed her Queen Anne’s Revenge and prowled the Atlantic Ocean and Caribbean Sea before running the ship aground just off the coast of Beaufort, N.C. in June 1718.

The ship wasn’t found until 1996. As part of a deal to receive salvage rights, the company that made the discovery acknowledges the state’s ownership of the ship and its artifacts. The company then hired Frederick Allen and his video production company, Nautilus Productions, to record the research.

Allen sued the state in 2013 after it posted Nautilus’ copyrighted material online, allegedly without permission. The parties soon settled, clarifying what footage was for “commercial documentaries” and what was “non-commercial media.”

Nautilus again sued in 2015 in the U.S. District Court for the Eastern District of North Carolina, alleging the state was still violating its copyright. The same year, the state passed a law making any shipwreck photos or videos in state custody into public records.

Among other things, the state claimed sovereign immunity from the suit under the 11th Amendment. But Allen and Nautilus Productions argue Congress repealed that protection with a the Copyright Remedy Clarification Act of 1990. Allen also sought to have the 2015 law declared unenforceable.

A district judge declined to grant the state’s motion to dismiss, but the 4th U.S. Circuit Court of Appeals held otherwise in an interlocutory appeal, ruling that if Congress wanted to use the copyright act to abrogate immunity, it needed to invoke Section 5 of the 14th Amendment, which allows Congress to make laws to further things like individual due process and equal protection.

IPLAC does not claim North Carolina violated the Nautilus’ copyrights in the case, but in a brief filed earlier this month, it argues the Richmond, Va.-based 4th Circuit decision should be overturned because it allows the state to avoid a suit altogether.

“Holding otherwise would permit states to trample on copyrights with impunity, under the rubric of sovereign immunity, thereby putting the entire foundation of copyright at risk,” the association’s brief states. “By reversing the Fourth Circuit, this Court will be promoting sciences and useful arts as provided in the Constitution and will be recognizing the intent of Congress when the CRCA was enacted.”

There’s no dispute that Congress intended to take away immunity in this context with the copyright act, approved in 1990. Section 511(a) notes that states and their officers “shall not be immune, under the Eleventh Amendment of the Constitution of the United States or under any other doctrine of sovereign immunity … for a violation of any of the exclusive rights of a copyright owner.” Another section of the law also made clear that the word “anyone” in the statute applies to states. And there’s no dispute abrogating immunity requires such a clear statement of intent.

The dispute is that the law was not a valid exercise of congressional power. To be valid, the federal appeals panel ruled, Congress must be clear it’s relying on Section 5 of the 14th Amendment and ensure the abrogation is “congruent and proportional” to the 14th Amendment injury it’s trying to prevent.

“In this case, we conclude that in enacting the Copyright Remedy Clarification Act, Congress satisfied neither requirement,” the panel ruled in July 2018.

But IPLAC contends Congress had another tool to abrogate sovereign immunity: the ‘Patent and Copyright Clause” in Article I, Section 8 of the Constitution. That clause states that Congress can “secur[e] for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.”

North Carolina and the federal appeals court agreed the U.S. Supreme Court foreclosed that route in the 1996 decision Seminole Tribe of Florida v. Florida, but the IPLAC argued a 2006 decision, Central Virginia Community College v. Katz, clarified that proclamation as dicta, and further, that another clause in the same article was a valid way to abrogate state immunity in the bankruptcy context.

The intellectual property lawyers argued that case history supports a determination that Article I language about copyrights can also be used to abrogate states’ immunity.

They also cited congressional hearing testimony in which members of the House and Senate committees explicitly discuss “a Fourteenth Amendment consideration” in enacting the CRCA. One federal lawmaker stated that “if in its exercise of its constitutional authority to implement fourteenth amendment rights Congress clearly indicated an intent to allow … [t]he individual to recover from the State, then that would supersede the Eleventh Amendment.”

Such discussions reveal Congress’s aim was obvious, the IPLAC wrote, and that legislators and courts at the time believed “that if Congress made explicitly clear and absolutely unambiguous that it was abrogating state sovereign immunity, that action would withstand scrutiny.”

The IPLAC argues the court should defer to the intent spelled out in the law and in congressional discussions, and that a failure to explicitly mention Section 5 of the 14th Amendment in the law should not negate the effort.

Besides, the IPLAC wrote, allowing the 4th Circuit decision to stand could create absurd consequences. The group wrote that in such a scenario, “states could infringe copyrights with impunity; play copyrighted music as a draw for public events and even charge entry fees to hear the music; show music videos at such events as a further draw; reproduce and sell books, scripts, lyrics; and even set up their own pay television networks to provide copyrighted movies to their residents, again with a fee paid into the coffers of the state by its residents.

“All of this could be done without paying royalties and without being subject to any suit by the copyright owners.”

The state has not filed its official arguments yet. But in an earlier petition attempting to dissuade the court from taking the case, it wrote that even if Congress had gone out of its way to invoke the 14th Amendment, the abrogation would still be invalid because copyright infringement is not running rampant amongst the states, and courts have held removing immunity requires alleged harms to be “widespread.”

“Here, in its deliberations over the Remedy Act, Congress did not explicitly identify even one case in which a state had infringed a copyright intentionally,” the state argued. “As the Fourth Circuit observed, moreover, the legislative record described ‘only two incidents’ of alleged state infringement in enough detail to suggest the infringement might have been intentional.”

The nation’s top justices agreed to hear the case in June. They’re slated to hear oral arguments in October.

IPLAC was founded in 1884 and has more than 1,000 members.

Robert H. Resis, a principal shareholder at Banner & Witcoff and chair of the intellectual property association's amicus committee who co-authored the brief, noted this morning that IPLAC is the oldest bar association devoted to intellectual property matters, "and we take it very seriously that it's important to protect the rights of creators."

"We've got an instance where we've got an important issue of whether states can infringe at-will, and the Supreme Court granted cert," Resis said.

IPLAC was also represented by its president, Banner & Witcoff attorney Charles W. Shifley, as well as Donald W. Rupert of Marshall Gerstein & Borun LLP.

North Carolina is represented by its solicitor general, Matthew W. Sawchak.

The plaintiffs are represented by a team of attorneys from Quinn Emanuel Urquhart & Sullivan LLP in New York and Washington, as well as Olive & Olive P.A. in Durham, N.C., and the Poe Law Firm PLLC in Durham,

The case before the U.S. Supreme Court is Frederick L. Allen, et al., v. Roy A. Cooper III, et al., No. 18-877.