The U.S. Supreme Court held that a photographer cannot bring a copyright infringement suit against the State of North Carolina because it has sovereign immunity.  Allen v. Cooper, 140 S.Ct. 994 (2020), https://www.supremecourt.gov/opinions/19pdf/18-877_dc8f.pdf.  The Court determined that the Copyright Remedy Clarification Act (CRCA), which purports to permit such suits, is unconstitutional.

As the Court observed, this case is a tale of piracy, old and new.  Blackbeard's flagship, Queen Anne's Revenge, sank off the coast of North Carolina in 1718.  A marine salvage company (Intersal) discovered the shipwreck nearly 300 years later.  Under U.S. law, the wreck belongs to the State, which retained Intersal to conduct recovery operations.  Intersal hired Frederick Allen to take photos and video, and he registered his copyrights in those works.  When the State published them without his permission, Allen brought suit in federal court for copyright infringement.

The State moved to dismiss the case on the ground of sovereign immunity.  In general, federal courts cannot hear suits brought by individuals against non-consenting States.  The Eleventh Amendment of the Constitution prohibits suit against a State by a citizen of another State; and courts have long understood this rule to apply to citizens of the same State as well.  However, such sovereign immunity does not apply when Congress has enacted "unequivocal statutory language" abrogating the States' immunity if it has the constitutional authority to do.

In 1990, Congress passed the CRCA, which provides that a State "shall not be immune . . . from suit in Federal Court" for copyright infringement; and that it shall be liable and subject to remedies "in the same manner and to the same extent as" a private party.  Allen argued that this created an exception to sovereign immunity so that his case could go forward.  The Supreme Court ruled in favor of the State and struck down the CRCA.  Although Congress' intent to remove States' immunity "could not [be] any clearer," the Court found that Congress did not have the constitutional authority to pass such a law.

Allen argued that Congress was so authorized by the Intellectual Property Clause of the Constitution, which enables Congress to grant copyrights and patents, but the Court disagreed.  It found that "the power to 'secure' an intellectual property owner's 'exclusive Right' … stops when it runs into sovereign immunity."

Allen further argued that Congress was authorized under the Fourteenth Amendment, which empowers Congress to "enforce" the Due Process Clause, that is, no State may "deprive any person of life, liberty, or property, without due process of law."  The court noted that the Fourteenth Amendment "fundamentally altered the balance of state and federal power that the original Constitution and the Eleventh Amendment struck."  Nonetheless, the Court found that it did not authorize the CRCA.  A proper abrogation statute under the Fourteenth Amendment must be tailored to protect the particular right that is guaranteed.  Although copyright is a form of "property," the Court found that allowing Congress to abrogate sovereign immunity for copyright infringement was not "congruent and proportionate" to the Fourteenth Amendment injury it seeks to remedy.  The Court indicated that it might feel differently based on evidence of "widespread" infringement or "wholesale violation of the copyright laws" by the States; but the evidence of constitutional injury was "exceedingly slight."

Justice Kagan, delivering the opinion of the Court, noted that its decision would not prevent Congress from passing a valid copyright abrogation law in the future, properly tailored to redress unconstitutional injuries.

In an earlier case, Florida Prepaid Postsecondary Ed. Expense Bd. v. College Savings Bank, the Court held that the Patent Remedy Act – a similar statute stripping states of sovereign immunity from patent suits – was unconstitutional.  Under the principle of stare decisis, the Court relied heavily on Florida Prepaid to come reach the same conclusion as to the CRCA.

Although the Court's decision in favor of the State was unanimous, Justice Thomas and Justice Breyer each wrote concurring opinions expressing their respective views on stare decision, which may have implications far outside the IP context.

In order to provide an additional measure to preserve and compound evidence, particularly in the case of method patents, the 2019 Amendment of the Patent Act introduced and adopted the SASHO (evidential review by experts) procedure. Although the details of the procedure had to be filled up by rules of the Supreme Court soon, it became law April 1, 2020. Then, the Supreme Court promulgated the rules of SASHO on Aril 22, 2020 even during the State of Emergency.

This is available for a plaintiff as a patentee to petition the court after the plaintiff files a complaint with the court. The plaintiff must show the court 1) how seriously necessary it is for them to preserve certain evidence in the hands of a defendant as an alleged infringer for proof of patent infringement, 2) how likely a patent infringement will be found, 3) the difficulty of collecting such patent infringement evidence in ways other than SASHO, 4) a minimum burden on a defendant even though the procedure of SASHO applies to the defendant.

After the plaintiff’s petition and the court decides to issue an order to proceed with SASHO, the defendant has a chance to appeal to the court to stop the procedure. On the other hand, even if such appeal is rejected, the court can appoint an expert to conduct the SASHO procedure at an appropriate venue, usually somewhere relating to the defendant’s business. The court can decide the issuance of an order by even using an in-camera process. The court appointed expert can investigate evidence which the plaintiff requested to preserve and can even utilize or operate real machines or systems to obtain data and review technical mechanisms, etc.  The expert has to submit to the court a written report of the SASHO procedure. This report will be used as evidence to prove patent infringement if the plaintiff files it with the court.

On the other hand, the defendant still has an opportunity to conceal their trade secrets before the expert submits his/her report. The court must allow the defendant to have such opportunity to do so.

The defendant may still refuse an enforcement of the SASHO procedure even though the court issues such order. In such situations the defendant who refuses the enforcement must accept disapproval from the court which is likely to consider the patent infringement argument as provided by the plaintiff to be the truth.  Provided however, there are no criminal or civil penalties associated with such refusal of the SASHO procedure.

As set forth above, the SASHO procedure was implemented in Japanese patent infringement litigation. However, its future is still unclear.  In the case of document submission orders which were expected to inspire more disclosure of patent infringement evidence, it has not been so widely used or successful in practice yet. It has additionally adopted an in-camera process by the court to encourage the issuance of document submission orders.  But the number of document submissions petitioned by parties is still relatively low because patent litigation practitioners are still sceptical regarding the easy issuance of document submission orders.

It is strongly desired that the SASHO procedure will inspire more evidential investigation by parties for expediting Japanese patent infringement litigation, though its requirements still appear to be rather narrow. Lawyers and judges should continue making efforts to develop better ways of practice using the SASHO procedure.