On December 21, 2006, the always outstanding Scotus blog posted an interview with David Stras, on the occasion of his insightful article "The Supreme Court's Gatekeepers: The Role of Law Clerks in the Certiorari Process." The interview went over the Court's anorexic plenary docket - over the past 5 or 6 years: the docket is now the lowest in 150 years. This year is far lower yet. Given what I believe to be the irresponsible way the Court has been adjudicating intellectual property cases - issuing purported 9 to 0 opinions, which have their legs cut out from under them by dueling concurring opinions that starkly reveal the Court's inability to muster a majority on the most important issues in the case (e.g. eBay and Grokster), the low docket is a cause to rejoice. I am going to the oral argument on February 21st in the AT&T v. Microsoft case, but cringe at the ultimate result of those deliberations.
Alas, despite the small number of cases taken by the Court, the Rehnquist Court repeatedly went out of its way to invite and take cases that have had a devastating impact on intellectual property owners' ability to collect damages against one particular type of defendant: states and their instrumentalities. If Congress makes it intent crystal clear, over and over again, in unambiguous language while exercising a valid constitutional power, might the courts follow that intent? When the topic is abrogating sovereign immunity, the answer is no. In a shell-game the Supreme Court has been playing since the ascendancy of a conservative majority, the Court tells Congress it didn’t do x and so it failed. Congress then goes back and does x, but the Court says, ah but you didn’t do y. Congress goes back and does y, and the Court says ah, but you didn’t do z. Congress has now seemingly concluded it could run the whole alphabet and it would do no good: the Court simply refuses to permit Congress to do what the Court facetiously acknowledges Congress may constitutionally do. In a deep affront to separation of powers, the Court complains that Congress didn't call enough witness, or didn't enumerate enough examples of states gone wild. How many witnesses are held at a hearing is none of the courts' business: Marbury v. Madison has never looked more like the naked power grab it was.
The latest lower court to get the Court’s signal is a district court in Puerto Rico. In De Romero v. Institute of Puerto Rican Culture, 2006 WL 3735352 (D.P.R. Dec. 15, 2006), the court found Congress indeed failed:
The first question before the Court is whether the Copyright Act, 17 U.S.C. § 101 et seq., as amended, validly abrogates the states' sovereign immunity. The Copyright Act makes any person who violates another's exclusive rights as copyright owner liable for actual or statutory damages. See, 17 U.S.C.A. §§ 501, 504. By virtue of the Copyright Remedy Clarification Act (hereinafter CRCA), PL 101-553 (1990), included among those who risk liability if they engage in the conduct proscribed by the Act are “any State, any instrumentality of a State, and any officer or employee of State or instrumentality of a State acting in his or her official capacity.” 17 U.S.C. § 501(a). Indeed, “[a]ny state, and any such instrumentality, officer, or employee, shall be subject to the provisions of this title in the same manner and to the same extent as any nongovernmental entity.” Id.
The language used by Congress leaves little room for argument as to its intention: Congress explicitly extended liability for copyright infringement to the states and its instrumentalities and officers. Because Congress made its intention to abrogate the states' immunity in copyright suits “unmistakably clear”, we turn to the second abrogation inquiry: whether Congress was constitutionally authorized to effect such an abrogation.
Per the discussion above, Congress' authority to abrogate the Eleventh Amendment immunity stems from § 5 of the Fourteenth Amendment. Congress may successfully invoke that authority after identifying conduct by the states that violates the Fourteenth Amendment's substantive provisions and tailoring its remedies to curb that conduct. In applying that standard to the CRCA, we find a host of obstacles. The first problem is evident from the inception of the analysis: the legislative history of the CRCA does not refer to § 5 of the Fourteenth Amendment as the source of authority for abrogating the states' immunity.
Congress' intent in passing the CRCA was to make clear that states should be held liable for copyright infringement. It was guided in that exercise by its belief that in order to effect the abrogation, it needed only to express such an intention within the statute. See, S.Rep. No. 101-305 (1990). Perhaps because at the time it passed the CRCA Seminole Tribe and City of Boerne, supra, had not yet been decided by the Supreme Court, Congress appeared to be unconcerned with the fact that its power to abrogate the states' immunity was founded on the Fourteenth Amendment, and that in order to be able to use such power, it had to fashion legislation that was proportionate to and congruent with the Fourteenth Amendment evil that it sought to erradicate.
Congress' failure to ground its legislation on the Fourteenth Amendment, in and of itself, presents problems for the abrogation inquiry. The Supreme Court, albeit in a footnote, has stated that when Congress is explicit about invoking its authority under certain constitutional clauses, the court is precluded from considering whether other clauses, not mentioned by Congress, provide a successful launching pad for the attack on the states' sovereign immunity. See, Florida Prepaid, 527 U.S. at 642, n. 7. See also, Chavez v. Arte Publico Press, 204 F.3d 601, 604 (5th Cir.2000) (stating that Florida Prepaid supports the proposition that a court may not consider whether the abrogation is justified in light of a constitutional ground that Congress did not invoke.) Even ignoring that snag, Congress' intent to abrogate the states' immunity in the CRCA does not prosper.
As Supreme Court precedents dictate we should do, we have turned to the legislative history to ascertain the Fourteenth Amendment evil that Congress sought to remedy, and whether the legislation it passed is tailored to eliminating such evil. As in Florida Prepaid, 527 U.S. 627 (dealing with a purported abrogation in the context of patent suits), the evil here is state infringement of copyrights and the use of Eleventh Amendment immunity to avoid compensating copyright owners for such infringement. Much like what happened with patents and Congress' intent to abrogate the states' immunity as to suits arising out of the infringement thereof, see, Florida Prepaid, supra (holding that the Patent and Plant Variety Protection Remedy Clarification Act did not validly abrogate the states' immunity), the legislative record of the CRCA offers scant evidence of widespread copyright infringement by the states in violation of the Due Process Clause. To be sure, there are accounts of a handful of cases in which states infringed copyrights, and at least in some of those cases the offending states used the Eleventh Amendment to shield themselves from responsibility for their actions. See, S.Rep. No. 101-305 (1990). But along with the six or seven concrete examples of such infringement that Congress could muster, the record also reveals that Congress heard testimony to the effect that the legislation was premature and that there were other measures that it could take in order to attend the problem of copyright infringement by states. See, H.R.Rep. No. 101-282 (1989). At least some of those were rejected due to considerations that are proper within the Article I calculus: for example, concurrent state jurisdiction over copyright suits was rejected because the Copyright Act sought to create a uniform Federal system. Id. See, Florida Prepaid, 527 U.S. at 645 (stating that the need for uniformity in patent law, while undoubtedly important, is a factor that belongs to the Article I calculus and not to the Eleventh/Fourteenth Amendment analysis); Chavez, 204 F.3d at 607 (applying the same reasoning to copyrights). As such, the CRCA's legislative history reveals that Congress had scarcely any evidence of unconstitutional action by the states, that it bypassed alternative remedies that did not entail abrogation of immunity for reasons that are extraneous to the Fourteenth Amendment analysis, and that, with such scant evidence, it passed far ranging legislation that conceivably FN5 covers more ground than is necessary to curb the states' unconstitutional conduct.FN6
In fact, what the legislative history shows is that more than consternation over actual or imminent copyright infringement by states in violation of the Due Process clause, Congress was moved by its conclusion “that it would be anomalous and unjustified for State ··· institutions to be exempt from certain remedies, while private institutions are not.” Id. Although the basic wisdom of that premise is self-evident, under City of Boerne, supra, and its progeny, it is not enough to effect a valid abrogation of the states' sovereign immunity. As such, we hold that the CRCA did not abrogate the states' (and its officers' and instrumentalities') Eleventh Amendment immunity. In so doing, we join the other courts that, post- Seminole Tribe, have faced this issue. See, Chavez, 204 F.3d 601 (analyzing the CRCA and its legislative history in light of the congruence and proportionality test, and concluding that it did not validly abrogate the states' immunity); Rodríguez v. Texas Com'n on the Arts, 199 F.3d 279 (5th Cir.2000) (concluding that CRCA did not validly abrogate the states' sovereign immunity); Salerno v. City Univ. of New York, 191 F.Supp.2d 352 (S.D.N.Y.2001) (dismissing copyright claims against arms of the state because they are immune from such suits); Jensen v. New York State Martin Luther King, Jr. Institute for Nonviolence, 13 F.Supp.2d 306, 311 (N.D.N.Y.1998) (stating that because “the copyright legislation was authorized by Article I and not the Fourteenth Amendment, Congress is without authority to abrogate state sovereign immunity for copyright cases”); Rainey v.. Wayne State University, 26 F.Supp.2d 973, 976 (E.D.Mich.1998) (“There is no question that the Eleventh Amendment bars plaintiff's federal copyright infringement claim and state law claims against WSU for monetary damages, as these claims would require payments from the State's coffers”); Hairston v. North Carolina Agric. & Technical State Univ., 2005 WL 2136923 (M.D.N.C.2005) (unpublished) (CRCA not a valid abrogation of states' immunity).FN7 But see, Florida Prepaid, 527 U.S. at 658, n. 9 (Stevens, J., dissenting) (suggesting that the CRCA would be able to withstand the congruence and proportionality test as set forth by the majority).