Infringement of Intellectual Property Rights and State Sovereign Immunity
Infringement of Intellectual Property Rights and
State Sovereign Immunity
Updated September 17, 2008
American Law Division
Brian T. Yeh
American Law Division
Infringement of Intellectual Property Rights and State
The Eleventh Amendment to the U.S. Constitution provides that “[t]he Judicial
Power of the United States shall not be construed to extend to any suit in law or
equity, commenced or prosecuted against one of the United States by Citizens of
another State, or by Citizens or Subjects of any Foreign State.” Although the
amendment appears to be focused on preventing suits against a state by non-residents
in federal courts, the U.S. Supreme Court has expanded the concept of state
sovereign immunity to reach much further than the literal text of the amendment, to
include immunity from suits by the states’ own citizens and immunity from suits
under federal law within a state’s own court system.
As a result of two landmark Supreme Court decisions in 1999, Florida Prepaid
and College Savings Bank, the Eleventh Amendment currently bars an individual
from successfully seeking damages from a state for violations of federal intellectual
property laws unless the state clearly consents to being sued through waiver, or
Congress legitimately abrogates state sovereign immunity. Valid waiver exists only
where a state has clearly submitted itself to federal jurisdiction. Courts have
interpreted this rule to validate waiver in several scenarios: where a state voluntarily
removes a case to federal court; where a state voluntarily initiates and participates in
the litigation; where the case is part of one continuous action in which the state
previously waived its immunity; where a state enacts legislation waiving its
sovereign immunity; or where a state enters a contract containing a provision in
which the state specifically submits to federal court jurisdiction in the case of a
dispute. Absent these forms of clear waiver, a state does not relinquish its privilege
of sovereign immunity under the Eleventh Amendment.
Congressional abrogation of state sovereign immunity to suit under federal
intellectual property laws is valid only when achieved through a congressional statute
passed pursuant to the enforcement power under § 5 of the Fourteenth Amendment.
A valid statute passed pursuant to § 5 will be limited in scope and remedy a
pervasive and unredressed constitutional violation. The Supreme Court has
previously invalidated congressional attempts to abrogate state sovereign immunity
in intellectual property lawsuits against state governments.
Where there has been no clear waiver by the state, nor abrogation of state
sovereignty by Congress, a party cannot obtain damages from a state under federal
law. The injured party may, however, sue the individual official responsible for the
violation for prospective injunctive relief under the Ex Parte Young doctrine. In
order to obtain this kind of non-monetary relief, the party must show a continued
violation of federal law and an adequate connection between the named official and
the actual violation.
In response to Florida Prepaid and College Savings Bank, various bills have
been introduced in previous sessions of Congress in an attempt to hold states
accountable for violations of intellectual property rights. These proposals, however,
never made it out of committee.
Overview of Intellectual Property Law.............................1
Infringement and Remedies..................................3
An Introduction to the Eleventh Amendment and
State Sovereign Immunity...................................5
The Road to Florida Prepaid and College Savings Bank...............6
State Waiver of Sovereign Immunity...............................9
Congressional Abrogation of State Sovereign Immunity..............15
Prospective Injunctive Relief ...................................18
The Legislative Response......................................19
Potential Developments in the Relationship between State
Sovereign Immunity and Intellectual Property..................21
Infringement of Intellectual Property Rights
and State Sovereign Immunity
In accordance with the doctrine of federalism, the American constitutional
system divides privilege and power between the central national government and the
individual states. Significant constitutional conflicts often arise, however, where the
legitimate exercise of power at one level is incompatible with the legitimate exercise
of power at the other. The convergence of state sovereign immunity and federal
intellectual property law provides one example of the complicated interaction
between the powers of the federal government, the state, and the individual, and the
inevitable conflicts that arise as all three attempt to exercise their established powers
The Eleventh Amendment to the U.S. Constitution, with limited exceptions,
bars an individual from suing a state under federal law without the state’s consent.
While states may consent to suit by waiving the privilege of sovereign immunity, in
limited circumstances Congress may also abrogate, or overrule, that immunity by
passing a statute pursuant to the enforcement power under § 5 of the Fourteenth
Amendment.1 There are times, however, when a state may decide against waiving
its sovereign immunity and Congress is unable to abrogate sovereign immunity
pursuant to the Fourteenth Amendment. In these situations, an individual is barred
from suing a state for monetary damages for a violation of federal law. Intellectual
property has emerged as one area where Congress has been unsuccessful in
abrogating sovereign immunity, and states have not expressly chosen to waive their
constitutionally protected privilege of immunity. Therefore, individuals may not
recover damages under federal patent, copyright, or trademark law for infringements
perpetrated by a state entity.2
Overview of Intellectual Property Law
Intellectual property (IP) law has several major branches, applicable to different
types of subject matter, including the following: copyright (original artistic and
literary works of authorship), patent (inventions of processes, machines,
manufactures, and compositions of matter that are useful, new, and nonobvious), and
trademark (commercial symbols and commercial names). The source of federal
copyright and patent law originates with the copyright and patent clause of the U.S.
Constitution, which authorizes Congress to “promote the Progress of Science and
1 Seminole Tribe of Florida v. Florida, 517 U.S. 44 (1996).
2 See, e.g., Florida Prepaid Postsecondary Educ. Expense Bd. v. College Savings Bank, 527
U.S. 627 (1999) (dismissing suit against Florida for patent infringement); College Savings
Bank v. Florida Prepaid Postsecondary Educ. Expense Bd., 527 U.S. 666 (1999) (dismissing
suit against Florida for false advertising).
useful Arts, by securing for limited Times to Authors and Inventors the exclusive
Right to their respective Writings and Discoveries.”3 By contrast, the constitutional
basis for federal trademark law is the power to regulate interstate commerce under
the commerce clause.4
IP Rights. The Copyright Act, Patent Act, and the Trademark Act of 1946
(conventionally known as the Lanham Act) provide legal protection for intellectual
property against unauthorized use, theft, and other violations of the rights granted by
those statutes to the IP owner. The Copyright Act provides copyright owners with
the exclusive right to control reproduction, distribution, public performance, and5
display of their copyrighted works. The Patent Act grants patent holders the right
to exclude others from making, using, offering for sale, or selling their patented
invention throughout the United States, or importing the invention into the United
States.6 The Lanham Act allows sellers and producers of goods and services to
prevent a competitor from (1) using any counterfeit, copy, or imitation of their
trademarks (that have been registered with the U.S. Patent and Trademark Office) in
connection with the sale of any goods or services in a way that is likely to cause
confusion, mistake, or deception,7 or (2) using in commercial advertising any word,
term, name, symbol, or device, or any false or misleading designation of origin or
false or misleading description or representation of fact, which (a) is likely to cause
confusion, mistake, or deception as to affiliation, connection, or association, or as to
origin, sponsorship, or approval, of his or her goods, services, or commercial
activities by another person, or (b) misrepresents the nature, characteristics, qualities,
or geographic origin of his or her or another person’s goods, services, or commercial8
activities. In addition, the Lanham Act grants to owners of “famous” trademarks the
right to seek injunctive relief against another person’s use in commerce of a mark or
trade name if such use causes dilution by blurring or tarnishing the distinctive quality
of the famous trademark.9
IP Owners. Private individuals and organizations may own various forms of
IP, either because they are the creators of such IP and have not relinquished their
rights by assignment,10 or they have acquired legal title to the IP. Federal, state, and
local government entities also may own or claim a property interest in certain patents,
copyrights, and trademarks, with the notable exception that the Copyright Act
3 U.S. CONST. art. I, § 8, cl. 8.
4 U.S. CONST. art. I, § 8, cl. 3.
5 17 U.S.C. § 106.
6 35 U.S.C. §§ 154(a)(1), 271(a).
7 15 U.S.C. § 1114(1).
8 15 U.S.C. § 1125(a)(1).
9 15 U.S.C. § 1125(c)(1). For more information about trademark dilution, see CRS Report
RL33393, Protecting Famous, Distinctive Marks: The Trademark Dilution Revision Act of
10 An “assignment” is a form of legal transfer in which the rights to property are conveyed
to another, often by sale and the use of a contract. BRYAN A. GARNER, BLACK’S LAW
DICTIONARY, 8TH ED. (2004).
categorically excludes copyright protection for any work of the U. S. government,11
although the federal government may receive and hold copyrights transferred to it by
assignment, bequest, or otherwise.12
Infringement and Remedies. Generally speaking, the use of a patented
invention, copyrighted work, or trademark without the authorization of the IP owner13
constitutes infringement. The IP owner may initiate a civil action against an alleged
infringer for a violation of any of the exclusive rights conferred by a patent,
copyright, or trademark. If a defendant is found guilty of patent infringement in a
lawsuit brought by the patent holder,14 the remedies available to the plaintiff include15
an injunction to cease and prohibit the offending activity by the defendant, damages
to compensate for the infringement,16 and even attorney fees.17 Federal law only
provides civil remedies in the event of patent infringement; there are no criminal
sanctions.18 The Copyright Act provides several civil remedies for infringement,19
including the possibility of obtaining injunctive relief, actual damages suffered by
the copyright owner due to the infringement,20 statutory damages,21 and costs and22
attorney fees. The U.S. Department of Justice may also criminally prosecute
particularly egregious violators of the copyright law in the case of willful23
infringement for purposes of commercial advantage or private financial gain. The
usual remedy for trademark infringement is injunctive relief,24 although monetary25
relief is also available. In addition, the court may order that any infringing articles
11 17 U.S.C. § 101 (defining a work of the U. S. government as “a work prepared by an
officer or employee of the United States Government as part of that person’s official
12 17 U.S.C. § 105.
13 17 U.S.C. § 501 (copyright); 35 U.S.C. § 271(a) (patent); 15 U.S.C. § 1114 (trademark).
14 35 U.S.C. § 281.
15 35 U.S.C. § 283.
16 35 U.S.C. § 284.
17 35 U.S.C. § 285.
18 35 U.S.C. § 281.
19 17 U.S.C. § 502.
20 17 U.S.C. § 504(b).
21 17 U.S.C. § 504(c)(1).
22 17 U.S.C. § 505.
23 17 U.S.C. § 506, 18 U.S.C. § 2319.
24 15 U.S.C. § 1116.
25 15 U.S.C. § 1117(a) (permitting recovery of the infringer’s profits, plaintiff’s damages and
litigation costs, and attorney fees).
bearing the reproduction, copy, or colorable imitation of a registered trademark be
Potential Defendants. As noted above, IP owners may enforce their rights
under the federal IP laws by bringing lawsuits against alleged infringers. The
defendants who may be sued for infringement include private individuals, companies,27
and also the federal government. However, while both monetary and injunctive
relief are available in the case of private entity defendants, the remedies differ when
the defendant is the federal government in copyright and patent infringement cases.
Federal government infringement of a copyright or patent may give rise to a cause of
action that is governed by statute, 28 U.S.C. § 1498. This law provides that if the
federal government uses a patented invention without the authorization of the patent
holder, or if the federal government infringes a copyright, the only remedy available
to the IP owner is the right to bring suit in the U.S. Court of Federal Claims to28
recover “reasonable and entire compensation” from the federal government.
However, note that the federal government remains fully liable for all forms of relief
(both monetary and injunctive) that are provided under the Lanham Act in the case
of trademark infringement.29
Yet when state governments and state institutions (such as state-owned
universities) infringe copyrights, patents, or trademarks, the IP owner currently has
very limited legal recourse because of the U.S. Supreme Court’s jurisprudence
concerning the Eleventh Amendment. This case law has produced what some
consider an anomalous outcome: a state may own a copyright, patent, or trademark
and sue to enforce its rights in federal court, but that state may not be held
accountable for monetary damages for its own violations of others’ IP rights unless30
the state waives its sovereign immunity and consents to be sued.
26 15 U.S.C. § 1118.
27 The “federal government” referred to in this section includes not only agencies and
instrumentalities of the federal government, but also a corporation owned or controlled by
the United States, or a contractor, subcontractor, or any person, firm, or corporation acting
for and with the authorization or consent of the federal government. See 28 U.S.C. §
28 However, the U.S. Court of Appeals for the Federal Circuit has held that the federal
government is immune from claims brought under the Digital Millennium Copyright Act
(DMCA), pertaining to that statute’s substantive prohibitions against the circumvention of
technological measures that copyright owners may utilize to prevent unauthorized access
or use of copyrighted works. The Federal Circuit in Blueport Co., LLC v. United States, 533
F.3d 1374 (Fed. Cir. 2008), determined that the DMCA “contains no express waiver of
sovereign immunity” and that 28 U.S.C. § 1498(b) does not apply because “a claim for
violation of the DMCA is not ... a subset of claims for copyright infringement” Id. at 1383-
29 15 U.S.C. § 1114(1) (in stating that “any person” who commits trademark infringement
shall be liable in a civil action, the statute expressly defines “any person” to include the
United States, and declares that the United States “shall be subject to the provisions of [the
Lanham Act] in the same manner and to the same extent as any nongovernmental entity.”).
30 See, e.g., Peter Lattman, Critics Take Aim At California’s Patent Shield, THE WALL ST.
An Introduction to the Eleventh Amendment
and State Sovereign Immunity
Shortly after the Revolutionary War, two citizens of South Carolina sued the
state of Georgia to recover a Revolutionary War debt owed by the State. The case
eventually made its way to the U.S. Supreme Court, where in Chisholm v. Georgia
the Court noted that Article III of the Constitution specifically granted the federal31
courts jurisdiction over suits “between a state and citizens of another state.” The
authorization came as a considerable surprise to the states, which had each relied on
the immunity from suit that had commonly accompanied state sovereignty. In a
direct rebuke of Chisholm, Congress and the states immediately acted to protect state
sovereign immunity through the ratification of the Eleventh Amendment, the first
amendment to the Constitution subsequent to the Bill of Rights.
The Eleventh Amendment states, “The Judicial power of the United States shall
not be construed to extend to any suit in law or equity, commenced or prosecuted
against one of the United States by Citizens of another State.”32 Though the language
of the amendment appears to bar only suits against a state by non-residents, the
Supreme Court has interpreted the doctrine of sovereign immunity to also bar suits33
by citizens against their own state. The Eleventh Amendment therefore protects
states from being sued in federal court without their consent in both federal question34
and diversity cases. The Court expanded the purview of the amendment in Alden
v. Maine to include immunity from suit under federal law within a state’s own court35
In Hans v. Louisiana, the Court considered whether the grant of federal
jurisdiction found in Article III of the Constitution negated state sovereign36
immunity. In holding that it did not, the Court characterized the Eleventh
Amendment as a specific attempt to overturn the Court’s misinterpretation in
Chisholm, rather than an affirmative amendment to the original structure of the
Constitution. The Eleventh Amendment had not constituted a change in the
Constitution, the Court determined, but a restoration of the original and intended
constitutional design. This interpretation allowed the Court to expand sovereign
immunity beyond the confines of the language of the Eleventh Amendment.
J., Nov. 13, 2007, at B1.
31 2 U.S. (Dall.) 419 (1793).
32 U.S. CONST. amend. XI.
33 Hans v. Louisiana, 134 U.S. 1 (1890).
34 The Eleventh Amendment does not provide counties and municipalities with the
protections of sovereign immunity. See, e.g., Board of Trustees of the University of
Alabama v. Garrett, 531 U.S. 356 (2001) (holding the Eleventh Amendment does not extend
its immunity to units of local government); Hess v. Port Authority Trans-Hudson Corp., 513
U.S. 30 (1994) (holding cities and counties do not enjoy Eleventh Amendment immunities).
35 527 U.S. 706 (1999).
36 Hans, 134 U.S. 1.
It was not until 1996 that the Court attempted to define the extent to which
Congress had the authority to abrogate sovereign immunity where a state refused to
waive its protection. In Seminole Tribe of Florida v. Florida, the Supreme Court
reasoned that because the Eleventh Amendment was ratified after Article I of the
Constitution, Congress could not abrogate state sovereign immunity pursuant to any
legislative power granted under the enumerated powers of Article I, § 8.37 The Court
did, however, suggest that Congress could abrogate sovereign immunity through a
statute passed pursuant to the § 5 enforcement power of the Fourteenth Amendment
because that legislative authority was granted subsequent to the ratification of the
Eleventh Amendment.38 It became clear following Seminole Tribe that any attempt
by Congress to abrogate state sovereign immunity would have to be justified under
the Fourteenth Amendment.
The Road to Florida Prepaid and College Savings Bank
From 179039 to 1962, no court had dismissed a suit for alleged intellectual
property infringement by a state on Eleventh Amendment sovereign immunity
grounds.40 An individual was free to recover damages from a state that was guilty of
copyright, patent, or trademark infringement. Then in 1962, a copyright infringement
action against an Iowa school district was dismissed by the Eighth Circuit Court of
Appeals for lack of jurisdiction under the Eleventh Amendment.41 The issue
simmered until 1985 when the Supreme Court dismissed an employment
discrimination case on sovereign immunity grounds because Congress had not
provided the requisite “unequivocal language” in the Rehabilitation Act of 1973
necessary to abrogate state sovereign immunity.42 The Court in Atascadero State
Hospital v. Scanlon held that federal statutes purporting to abrogate state sovereign
immunity must clearly express Congress’s intent to provide a remedy for individuals
filing suit against a state.43 The Federal Circuit Court of Appeals then applied
Atascadero in Chew v. California, in holding that the Patent Act did not contain the
“requisite unmistakable language of Congressional intent necessary to abrogate
Eleventh Amendment immunity.”44 Congress, concerned about the integrity of its
intellectual property laws and unwilling to accept the proposition that states could
enjoy the protections of federal intellectual property law without recognizing others’
37 517 U.S. 44 (1996).
38 Id. at 72-3 (“The Eleventh Amendment restricts the judicial power under Article III, and
Article I cannot be used to circumvent the constitutional limitations placed upon federal
39 The Copyright Act of 1790 made “any person” liable for damages as a result of copyright
infringement. 1 Stat. 124 (1790).
40 Sovereign Immunity and the Protection of Intellectual Property: Hearing Before the S.
Comm. on the Judiciary, 107th Cong. (2002) (statement of Marybeth Peters, Register of
Copyrights, U.S. Copyright Office).
41 Wihtol v. Crow, 309 F.2d 777 (8th Cir. 1962).
42 Atascadero State Hospital v. Scanlon, 473 U.S. 234 (1985).
44 893 F. 2d 331, 334 (Fed. Cir. 1990).
interests in intellectual property protections, soon responded to the uncertainty
created by the Atascadero and Chew decisions by passing the Copyright Remedy
Clarification Act (CRCA),45 the Trademark Remedy Clarification Act (TRCA),46 and
the Patent and Plant Variety Protection Remedy Clarification Act (PRCA).47
Language within these acts specifically and unequivocally abrogated state sovereign
immunity and subjected the states to suits for monetary damages brought by
individuals for violation of federal copyright, trademark, or patent law.
In 1999, sensing a growing tension between state and federal power, the
Supreme Court granted certiorari to review two companion cases out of the Third
Circuit and Federal Circuit Court of Appeals48 dealing directly with the abrogation
of state sovereign immunity under the PRCA and the TRCA.49 College Savings
Bank had been awarded a patent for its financing methodology, based on certificates
of deposit and annuity contracts, designed to guarantee investors funds for future
college expenses. The state of Florida soon adopted College Savings Bank’s
methodology and created the Florida Prepaid Postsecondary Education Expense
Board (the Board) to issue similar financing options to its own residents.
Consequently, College Savings Bank filed two separate actions seeking damages
from the Board. In the first action, Florida Prepaid v. College Savings Bank, College
Savings Bank filed a claim for patent infringement against the Board under the
PRCA.50 In the second action, College Savings Bank v. Florida Prepaid, College
Savings Bank filed a claim alleging false and misleading advertising by the Board
under the TRCA.51 In defense, the Board argued that both the PRCA and the TRCA
were an improper attempt by Congress to abrogate state sovereign immunity. The
United States intervened in both cases in support of College Savings Bank.
The principal issue in Florida Prepaid was whether the PRCA had legitimately
abrogated state sovereign immunity from suit for patent infringement. College
Savings Bank argued that Congress had lawfully done so pursuant to the due process
clause by ensuring an individual an adequate remedy in the case of a deprivation of
property perpetrated by the state in the form of patent infringement. The Board
responded that the PRCA was passed pursuant to Congress’s enumerated Article I
powers, rather than its powers under the Fourteenth Amendment, and therefore
constituted invalid abrogation under Seminole Tribe. The district court agreed with
College Savings Bank and denied the Board’s motion to dismiss. The Federal Circuit
45 P.L. 101-553, 104 Stat. 2749 (1990) (codified at 17 U.S.C. § 511).
46 P.L. 102-542, 106 Stat. 3568 (1992) (codified at 15 U.S.C. § 1125(a)).
47 P.L. 102-560, 106 Stat. 4230 (1992) (codified at 35 U.S.C. §§ 271(h), 296(a)).
48 Florida Prepaid diverged from College Savings Bank at the appellate level because the
U.S. Court of Appeals for the Federal Circuit retains exclusive appellate jurisdiction over
patent cases. 28 U.S.C. § 1295(a).
49 Florida Prepaid Postsecondary Educ. Expense Bd. v. College Savings Bank, 527 U.S. 627
(1999); College Savings Bank v. Florida Prepaid Postsecondary Educ. Expense Bd., 527
U.S. 666 (1999).
50 527 U.S. 627 (1999).
51 527 U.S. 666 (1999).
Court affirmed, holding that “Congress had clearly expressed its intent to abrogate
the States’ immunity ... and that Congress had the power under § 5 of the Fourteenth
Amendment to do so.”52 The PRCA had specifically made “States, instrumentalities
of States, and officers and employees of States acting in their official capacity, 
subject to suit in Federal court by any person for infringements of patents.”53
However, the Supreme Court overturned the Federal Circuit decision, holding
that the PRCA was not a valid use of the § 5 enforcement power of the Fourteenth
Amendment and therefore not a legitimate abrogation of state sovereign immunity.54
In reaffirming that Congress may not abrogate state sovereign immunity pursuant to
Article I powers, the Court applied its holding in City of Boerne v. Flores55 to
determine whether the PRCA was aimed at securing property protections guaranteed
under the Fourteenth Amendment rather than passed pursuant to Article I, § 8, clause
8.56 While admitting that patents were “property” protected by the due process
clause, the Court held that because Congress had not shown sufficient evidence of
a “widespread and persisting deprivation of constitutional rights” nor adequately
considered the availability of alternative remedies under state law, the PRCA was “so
out of proportion to a supposed remedial or preventive object that [it] cannot be
understood as responsive to, or designed to prevent, unconstitutional behavior.”57
The principal issue in College Savings Bank was whether the state of Florida
had indirectly waived sovereign immunity by electing to engage in a federally
regulated activity knowing that such conduct would subject it to suit under federal
law. College Savings Bank argued that Congress had lawfully abrogated state
sovereign immunity in trademark infringement actions through the TRCA.
Alternatively, College Savings Bank argued that Florida had waived sovereign
immunity by voluntarily engaging in the “activity of selling and advertising a for-
profit educational investment vehicle in interstate commerce after being put on notice
by the clear language of the TRCA that it would be subject to ... liability for doing
so.”58 The district court was not swayed by College Savings Bank’s arguments and
dismissed the case. The Court of Appeals for the Third Circuit affirmed.
The Supreme Court affirmed the dismissal, holding that Florida’s actions did
not constitute waiver. The Court first brushed aside the petitioner’s abrogation
argument, reasoning that neither of the TRCA’s false or misleading advertising
52 Florida Prepaid, 527 U.S. at 633.
53 Id. at 632.
54 Id. at 647.
55 521 U.S. 507 (1997) (holding that the Religious Freedom Restoration Act of 1993
exceeded Congress’s authority under § 5 of the Fourteenth Amendment).
56 “To promote the Progress of Science and useful Arts, by securing for limited times to
Authors and Inventors the exclusive Right to their respective Writings and Discoveries.”
U.S. Const. Art I, § 8, cl. 8.
57 Florida Prepaid, 527 U.S. at 645-46 (citing City of Boerne, 521 U.S. at 526, 532).
58 College Savings Bank v. Florida Prepaid Postsecondary Educ. Expense Bd., 527 U.S. 666,
provisions related to interests that would qualify as property interests protected by the
due process clause,59 and were therefore not passed pursuant to the Fourteenth
Amendment.60 The Court devoted a large part of its opinion to rejecting College
Savings Bank’s argument that Florida had waived sovereign immunity through its
knowing participation in an activity that would subject it to suit under the TRCA.
The majority refused to recognize any form of constructive waiver in sovereign
immunity; instead, waiver could only be found where the state voluntarily invoked
federal jurisdiction, or where the “state makes a clear declaration that it intends to
submit itself” to federal jurisdiction.61 Florida had done neither.
As a result of Florida Prepaid and College Savings Bank, the Eleventh
Amendment currently bars an individual from successfully seeking damages from a
state for federal patent — and likely copyright and trademark — infringement,62
unless the state has clearly consented to the suit through waiver, or Congress has
successfully abrogated state sovereign immunity pursuant to a valid use of its
legislative power under the Fourteenth Amendment. The specifics of these two
avenues that would permit a state to be sued — waiver and abrogation — are
discussed in detail below.
State Waiver of Sovereign Immunity
Although state sovereign immunity is a “personal privilege which it may waive
at [its] pleasure,” the Court will only recognize waiver in instances where the state
has explicitly shown its intent to waive immunity.63 The College Savings Bank Court
held that waiver would only be legitimate where “the State voluntarily invoke[d] our
jurisdiction,” or where “the State makes a ‘clear declaration’ that it intends to submit
59 The Court explained that while trademarks are constitutionally cognizable property
interests in which their owners have the right to exclude others from using them, “no
decision of this Court (or of any other court, for that matter) recogniz[es] a property right
in freedom from a competitor’s false advertising about its own products.” Id. at 673.
60 Id. at 672.
61 Id. at 676.
62 As explained above, College Savings Bank concerned only the false and misleading
advertisement provisions of the federal Lanham Act, 15 U.S.C. § 1125(a), and not the
provisions of the Lanham Act that pertain to infringement of trademarks. Thus, the Supreme
Court did not definitively rule on the issue of trademark infringement and state sovereign
immunity, nor has it opined on this matter in any other subsequent case. The Court has also
not directly addressed the issue of state liability for copyright infringement. However, a
federal court of appeals has applied Florida Prepaid in holding that the Copyright Remedy
Clarification Act was an improper exercise of congressional power. Chavez v. Arte Publicoth
Press, 204 F.3d 601, 607 (5 Cir. 2000). Similarly, a federal district court has ruled that the
Trademark Remedy Clarification Act is unconstitutional as far as its authorization of
trademark infringement lawsuits against states. Board of Regents of the Univ. of Wisconsin
System v. Phoenix Software Int’l, Inc., No. 07-cv-665-bbc, 2008 WL 2780905 (W.D. Wis.
July 15, 2008). See the discussion of these lower court cases infra.
63 College Savings Bank, 527 U.S. at 675 (citing Clark v. Barnard, 108 U.S. 436, 447
itself to our [the federal court’s] jurisdiction.”64 For example, consent to suit in a
state’s own courts does not translate into a waiver of immunity in federal court
because it does not constitute a clear declaration of waiver of immunity in the federal
system. Illustrating the importance of state sovereign immunity, the Court equated
the requirements for waiver of sovereign immunity by a state to the requirements for
waiver of a protected constitutional right by an individual.65
In order to convey the seriousness with which the Court would approach the
standard for waiver of a state’s right to immunity in federal court, the majority
opinion in College Savings Bank specifically overturned existing precedent relating
to waiver implied by the state’s actions rather than through express consent. At issue
in Parden v. Terminal R. of Ala. Docks Dept. was a statute Congress had passed that
authorized employment discrimination suits by employees of any employer operating
a railroad in interstate commerce.66 The Parden Court held, against a strong dissent,
that by “operating a railroad in interstate commerce, Alabama must be taken to have
accepted that condition and thus to have consented to suit.”67 By participating as a
common carrier in interstate commerce the State had impliedly, or constructively,
waived sovereign immunity.
The petitioner in College Savings Bank used the Parden precedent to argue that
Florida, “by engaging in the ... activity of selling and advertising a for-profit
educational investment vehicle in interstate commerce” with the knowledge that
doing so would subject it to suit under the TRCA, had impliedly waived its68
immunity. The Court refused to accept the argument. After outlining the many
cases that had narrowed the legitimacy of constructive waiver under Parden, the
Court expressly overruled the Parden “anomaly”: “There is little reason to assume
actual consent based upon the State’s mere presence in a field subject to69
congressional regulation.” Even where a state is on notice that participation in a
given field could subject it to suit under federal law, merely entering the regulated
field does not amount to a voluntary decision to waive immunity.
In overruling Parden, College Savings Bank made clear that a federal court
would require explicit evidence of an intent to waive sovereign immunity before
allowing a case against a state to proceed. While this case barred the recognition of
an implied waiver based on general state participation in a regulated field, other cases
have wrestled with the extent to which states may invoke federal court jurisdiction
and waive immunity by voluntarily participating in legal proceedings.
64 Id. at 676.
65 Id. at 682 (citing Johnson v. Zerbst, 304 U.S. 458, 464 (1938) (stating that waiver requires
“[a]n intentional relinquishment or abandonment of a known right or privilege.”)).
66 377 U.S. 184 (1964).
67 Id. at 192.
68 College Savings Bank, 527 U.S. at 680.
The Supreme Court has held that a state voluntarily invokes a federal court’s
jurisdiction, and waives sovereign immunity, where the state voluntarily removes a
case from state court to federal court.70 In Lapides v. Board of Regents, the Court
clearly distinguished between the repudiated Parden-style constructive waiver, and
waivers effected by affirmative litigation conduct, such as removal.71 Paul Lapides,
a professor at the University of Georgia had brought suit against the Board of
Regents of the University System of Georgia for violation of state and federal civil
rights law. The state of Georgia joined with their co-defendants to remove the case
to federal district court and asked for a dismissal of the claims under state sovereign
immunity. The Court, limiting its holding to those situations in which a state has
expressly waived immunity in the underlying state court proceedings, held that where
a state voluntarily removes a case to federal court it engages in affirmative litigation
conduct sufficient to waive sovereign immunity. In reaching its holding, the Court
expressed concern over the “unfair tactical advantages” and “selective use of
immunity” that a state would enjoy by removing a case to federal court.72 Lapides,
however, left unclear exactly what “affirmative litigation conduct” would qualify as
The Federal Circuit Court of Appeals entered the fray in a 2002 case, holding
that a state participates in affirmative litigation conduct sufficient to waive sovereign
immunity when the state initiates the legal proceedings. In Vas-Cath Inc. v. Univ. of
Missouri, the University of Missouri had initiated an administrative proceeding
known as an interference action within the U.S. Patent and Trademark Office (PTO)
to clarify a dispute with Vas-Cath over ownership of a patent.73 Following six years
of proceedings, the PTO issued an order granting ownership of the patent to the
university. As authorized by law, Vas-Cath appealed the PTO decision to the United
States District Court for the District of Columbia. The university had the case
transferred to Missouri where the federal district court granted its motion to dismiss
on the grounds of Eleventh Amendment sovereign immunity.
On appeal, the Federal Circuit reversed the district court decision, holding that
where a state initiates an administrative proceeding with ensuing judicial review, the
state “cannot both retain the fruits of that action and bar the losing party from its74
statutory right of review.” By voluntarily commencing and participating in the PTO
interference action, the state had waived its privilege of sovereign immunity with
respect to judicial review of that decision in federal court. The appellate court
grounded its decision on the Supreme Court’s previously expressed concern over the75
“selective use of immunity to achieve litigation advantages.” The court held it
would be unfair and inconsistent to allow the state, in one continuous action, to
70 Lapides v. Board of Regents of Univ. System of Georgia, 535 U.S. 613 (2002).
72 Id. at 620.
73 473 F.3d 1376 (Fed. Cir. 2007).
74 Id. at 1385.
75 Lapides, 535 U.S. at 620.
invoke sovereign immunity “to shield the agency decision from review.”76 Where a
state becomes a party in a legal proceeding that it voluntarily initiated, the state has
“submitted its rights for judicial determination” and may not escape the proceedings
under the auspices of the Eleventh Amendment until the statutorily guaranteed
judicial review is exhausted.77
Later that year, the Federal Circuit limited its decision in Vas-Cath and refused
to extend the doctrine of waiver by affirmative litigation conduct to separate
lawsuits. The Court affirmed the rule that a state’s waiver of immunity through
litigation conduct in one case does not extend to a separate, future action. In
Biomedical Patent Management Corp. v. California Dept. of Health Services, a
private contractor employed by California’s Department of Health Services (DHS)
had sued Biomedical in 1997 in the U.S. District Court for the Northern District of
California for a declaratory judgment stating that the contractor’s pregnancy
screening program did not infringe a Biomedical patent.78 DHS intervened in that
action, also seeking a declaration of non-infringement, and Biomedical responded
with a counterclaim in favor of patent infringement. The 1997 case was eventually
dismissed for lack of venue. Biomedical re-filed its infringement claim in 1998, but
the U.S. District Court for the Southern District of California dismissed the case
pending the Supreme Court’s determination of Florida Prepaid and College Savings
Bank. Finally, in 2007, Biomedical again re-filed its claim against DHS, at which
time DHS filed a motion to dismiss the case on state sovereign immunity grounds
that was subsequently granted by the district court.
The Federal Circuit affirmed the district court’s decision to grant the state’s
motion for dismissal under the Eleventh Amendment. The appellate court held that
California had clearly waived sovereign immunity in the 1997 case and voluntarily
submitted itself to the federal court’s jurisdiction by intervening in the non-
infringement action.79 The question the court had to answer, however, was whether
the waiver in the 1997 case would carry over and extend to the 2006 case involving
the same parties and litigating the same subject matter. The Federal Circuit, after a
thorough survey of state sovereignty waiver jurisprudence, determined that waiver
could not carry over to a separate lawsuit, and that “any waiver, including one80
effected by litigation conduct, must be ‘clear.’” As it had in Vas-Cath, the court
recognized Biomedical’s concerns of unfairness, inconsistency, and selective use of
immunity, but the court would not extend waiver through litigation conduct to
separate legal proceedings.
The Federal Circuit clearly differentiated between waiver scenarios consisting
of one continuous action and those consisting of separate actions. Biomedical looked
76 Vas-Cath, 473 F.3d at 1384.
77 Id. at 1383.
78 505 F.3d 1328 (Fed. Cir. 2007).
79 Id. at 1333 (“By intervening and asserting claims against BPMC in the 1997 lawsuit,
DHS voluntarily...waived its sovereign immunity for purposes of that lawsuit.”).
80 Id. at 1341.
to Lapides, Vas-Cath, and New Hampshire v. Ramsey81 as precedent for finding
waiver through litigation conduct where a state voluntarily submits itself to the
jurisdiction of a federal court. The court rejected the argument, pointing out that
none of the cases Biomedical cited supported the extension of state waiver to a
separate action. Instead, all had “involve[d] the application of a state’s waiver of
immunity in the same continuous proceeding.”82 The court did acknowledge the
existence of situations in which concerns of unfairness, inconsistency, and selective
use of immunity would be so significant as to outweigh the court’s policy not to
extend waiver to a separate legal action. No similar concerns existed in the
Biomedical case, however, that were sufficient to “preclude” DHS from asserting
In addition to some forms of litigation conduct, state sovereign immunity may
also be waived where the state specifically submits itself to the jurisdiction of a
federal court through a provision of an enforceable contract. In Baum Research and
Developmental Co., Inc., v. Univ. of Mass. at Lowell, a dispute arose over a contract
the University of Massachusetts had entered into with Baum Research relating to the
firm’s patented device for testing baseball bats.84 The two parties formed a
“Confidential License Agreement” for the use of the patented device, which included
a governing law provision stating that all parties “agree to proper venue and hereby
submit to jurisdiction in the appropriate State or Federal courts.”85 The court held
this contract provision to be “a clear and unambiguous consent to the jurisdiction of
a Michigan federal court for disagreements arising from this licensing agreement.”86
Although general consent provisions are not sufficient to waive sovereign immunity,
this provision was clear and unequivocal as to the obligation of the state to submit
to the jurisdiction of the federal court in the case of a future dispute.
However, a state that participates in the federal trademark system or that files
a civil action in a federal court seeking review of a decision of the Trademark Trial
and Appeal Board of the PTO does not waive its sovereign immunity, according to
the federal district court in Board of Regents of the Univ. of Wisconsin System v.87
Phoenix Software Int’l, Inc. This opinion involved the Trademark Trial and Appeal
Board’s (TTAB’s) decision to cancel a federal trademark that had been registered by
the Board of Regents of the University of Wisconsin System. A software
manufacturer had filed a petition with the TTAB seeking the cancellation, asserting
that the Board of Regents’ mark was similar to the one that it used for its software
81 366 F.3d 1 (1st Cir. 2004) (holding that a state voluntarily invokes federal jurisdiction in
a continuous action where the state participates in an administrative proceeding that
provides for judicial review).
82 Id. at 1338.
83 Id. at 1340 (“The same considerations of unfairness and inconsistency ... simply are not
present in the case at bar.”).
84 503 F.3d 1367 (Fed. Cir. 2007).
85 Id. at 1368.
86 Id. at 1372.
87 No. 07-cv-665-bbc, 2008 WL 2780905 (W.D. Wis. July 15, 2008).
for computers. The TTAB granted the petition, prompting the Board of Regents to
appeal the decision to the federal district court. After the software manufacturer filed
a counterclaim against the Board of Regents for trademark infringement related to the
university’s use of the mark, the university moved to dismiss the counterclaim on the
grounds that the university is a branch of the State of Wisconsin and thus entitled to
The federal court granted the motion and dismissed the software manufacturer’s
counterclaim. In reaching these decisions, the court first examined the validity of
Congress’s attempt to abrogate state immunity from trademark infringement suits
pursuant to the Trademark Remedy Clarification Act. Noting that the Supreme
Court’s decision in College Savings Bank considered only the liability of states for
claims brought under the false and misleading advertisement provisions of the federal
Lanham Act, and not the statute’s trademark infringement provisions, the district
court concluded that “[i]t is unlikely the [Supreme] Court would reach a different
conclusion in trademark litigation.”89 Citing that the TRCA’s legislative history had
not found a pattern of trademark infringement by the states and that it had not
seriously discussed Fourteenth Amendment concerns to justify abrogation, the federal
court ruled that the TRCA is not “congruent and proportional” to any Fourteenth
Amendment injury and thus the TRCA was unconstitutional and fails to abrogate
state immunity from trademark infringement suits.90 With respect to the waiver
issue, the district court explained that the State of Wisconsin has not “constructively
waive[d]” its immunity by participating in the federal trademark system. While
acknowledging that College Savings Bank had held that Congress may condition a
“gift” on the waiver (such as a grant of funds to the state upon waiver of immunity),
the Trademark Remedy Clarification Act does not condition a state’s receipt of a
federal trademark registration on a waiver of sovereign immunity; rather, the court
explained, the TRCA “seeks to expose all states to liability, regardless of their
participation in the federal trademark system.”91 The court also determined that
Wisconsin had not waived its immunity by appealing the TTAB’s cancellation
decision to a federal court, because its invocation of federal jurisdiction was not
voluntary. Here, the software manufacturer had initiated the administrative
proceedings by petitioning the TTAB to cancel the state’s trademark, and the state
was “simply ... contesting unfavorable decisions in suits brought against it.”92
The Supreme Court set the standard for waiver of state sovereign immunity in
College Savings Bank: “Generally, we will find a waiver either if the State
voluntarily invokes [a federal court’s] jurisdiction, or else if the State makes a ‘clear
declaration’ that it intends to submit itself to our jurisdiction.”93 A state must clearly
submit itself to federal jurisdiction and cannot constructively or impliedly waive its
88 Id. at *1.
90 Id. at *4.
91 Id. at *5. (emphasis in original).
93 College Savings Bank, 527 U.S. at 675-76.
sovereign immunity. The Federal Circuit and other federal district courts have
interpreted this rule to validate waiver where a state voluntarily removes a case to
federal court; where a state voluntarily initiates and participates in the litigation;
where the case is part of one continuous action in which the state previously waived
its immunity; where a state enacts legislation waiving its sovereign immunity; or
where a state enters a contract containing a provision in which the state specifically
submits to federal court jurisdiction in the case of a dispute. Absent these forms of
clear waiver, a state does not relinquish its privilege of sovereign immunity under the
Congressional Abrogation of State Sovereign Immunity
Although state sovereign immunity is a common law privilege preserved by the
Eleventh Amendment, under limited situations Congress may abrogate, or override,
state immunity in a given subject matter. In Seminole Tribe, the Supreme Court held
that Congress could not abrogate state sovereign immunity through a statute passed
pursuant to any of its Article I powers. However, the Court left the door open for
abrogation by statutes passed pursuant to the § 5 legislative enforcement power of the
Fourteenth Amendment. This signifies that any attempt by Congress to abrogate
state sovereign immunity must find a basis in the Fourteenth Amendment. In order
for a statute to be passed pursuant to Congress’s § 5 power, the means adopted must
be congruent and proportional to the remedy of a due process, equal protection, or
privileges and immunities injury.
The Court in Florida Prepaid held that the PRCA was passed pursuant to
Congress’s Article I powers, rather than its § 5 power, and was therefore an invalid
abrogation of state sovereign immunity. Although the Court acknowledged that
patents were “property” under the due process clause, Congress had failed to satisfy
the “congruence and proportionality” test used in City of Boerne v. Flores to define
the scope of the § 5 enforcement power.94 In considering what measures can be taken
to prevent constitutional violations, the City of Boerne Court held that “there must
be a congruence and proportionality between the injury to be prevented or remedied95
and the means adopted to that end.” In order to show the required proportionality,
Congress must identify conduct transgressing the Fourteenth Amendment’s
substantive provisions, and must tailor its legislative scheme to remedying or
preventing such conduct. The Florida Prepaid Court applied the City of Boerne test
to the PRCA and found the evidence of patent infringements by the states to be
lacking: “Congress identified no pattern of patent infringement by the states, let alone96
a pattern of constitutional violations.” The record reflected the existence of only
eight patent infringement actions against the states “in the 110 years between 188097
and 1990.” Without evidence of widespread or pervasive infringements by the
94 Id. at 654 (citing City of Boerne, 521 U.S. 507).
95 City of Boerne, 521 U.S. at 520.
96 Florida Prepaid, 527 U.S. at 640.
states, the Court was unwilling to justify the abrogation of state sovereign immunity
under the PRCA.
Additionally, Congress had failed to adequately consider the availability of state
law remedies. The Court explained that mere patent infringement by the state does
not violate the due process clause; rather, “only where the state provides no remedy,
or only inadequate remedies, to injured patent owners for its infringement of their
patent could a deprivation of property without due process result.”98 Where the state
provides an adequate remedy, or the necessary process prior to infringing a patent,
there is no violation of due process. Any statute that abrogated state sovereign
immunity in a situation where the patent infringement did not amount to a
constitutional violation of due process would thus be overboard. The record showed
Congress had “barely considered” the availability of state remedies to patent
infringements by the state.99 Because Congress had not presented sufficient evidence
of widespread and persisting deprivations of constitutional rights, had not adequately
considered the availability of state remedies, and had not adequately tailored its
legislation to cover only those patent infringements by the state that constituted
constitutional violations, the PRCA was “so out of proportion to a supposed remedial
or preventive object” as to be considered an invalid use of the § 5 enforcement
power.100 Thus, the abrogation provision of the PRCA was held to be invalid.
In 2000, the Fifth Circuit elaborated on the Florida Prepaid abrogation standard
and applied the precedent to copyright law. In Chavez v. Arte Publico Press,101 the
plaintiff sued the University of Houston for copyright infringement under the CRCA
for publishing the plaintiff’s book without her consent. Relying on Florida Prepaid,
the university invoked sovereign immunity as a defense. The court quickly
recognized that a copyright, similar in nature to a patent, was a form of property
protected by the Fourteenth Amendment and with no waiver argument made, the only
question for the court was whether the abrogation provision of the CRCA was within
the scope of Congress’s § 5 enforcement power and therefore a valid abrogation of
state sovereign immunity under Florida Prepaid. In holding that the CRCA,
“doomed in the wake of Florida Prepaid,” was not a valid use of Congress’s § 5
power, the court gleaned a functional three-part test from the Supreme Court’s102
Florida Prepaid decision.
First, the court must consider the nature of the injury and whether “the state’s
conduct evinced a pattern of constitutional violations.”103 Congress, as it had for the
PRCA in Florida Prepaid, had failed to provide sufficient evidence of widespread
and unremedied copyright infringement by the states. The record only contained
seven instances in which a state utilized the Eleventh Amendment as a defense to
98 Id. at 643.
100 Id. at 646 (citing City of Boerne, 521 U.S. at 532).
101 204 F.3d 601 (5th Cir. 2000).
102 Id. at 608.
103 Id. at 605.
copyright infringement. The legislative record demonstrated that Congress’s
principal concern was over the “potential for future abuse,” a worry not sufficient to
establish the required “pattern” of infringement by the states.104 Second, the court
must consider whether “Congress studied the existence and adequacy of state
remedies for injured copyright owners when a state infringes their copyright.”105 In
the case of the CRCA, the Fifth Circuit held that Congress had “barely considered the
availability of state remedies for infringement.”106 The court noted there was little
documentation by Congress of state contract or takings remedies, and Congress had
refused to consider the possibility of granting states concurrent jurisdiction over
copyright claims. Finally, the court must consider the breadth of coverage of the
legislation. Florida Prepaid made clear that not all patent infringements violate the
Constitution. A negligent patent infringement for instance, as opposed to an
intentional violation, would not constitute a violation of due process. In Chavez, the
court reasoned that because copyright infringement required no finding of an intent
to infringe, any valid abrogation statute would have to limit its scope to include only
intentional property infringements by the states that amounted to a violation of due
Florida Prepaid, Chavez, and other cases have not completely closed the door
on federal abrogation of state sovereign immunity in the intellectual property realm.
If Congress could show a substantial increase in intentional intellectual property
infringements by the states, perhaps the courts would reconsider the existence of a
widespread pattern of infringement and uphold an abrogation attempt. Ten years
after Florida Prepaid, however, the United States District Court for the Southern
District of California ruled that, as of 2008, the frequency of state infringements still
did not warrant federal abrogation of state sovereign immunity.108 In Marketing
Information Masters v. The Board of Trustees of the California State University,
plaintiffs brought suit against the California State University for copyright
infringement relating to the school’s use of a community impact study for the 2004
Holiday Bowl in San Diego. The district court upheld the state’s claim to sovereign
immunity and granted the state’s motion to dismiss. The court applied the standards
of the Supreme Court’s rulings in City of Boerne and Florida Prepaid, and cited the
Fifth Circuit’s holding in Chavez, in ruling that the CRCA was not passed pursuant
to a legitimate exercise of the Fourteenth Amendment and therefore did not constitute
a valid abrogation of state sovereign immunity.
Although the updated record showed eight recent cases of state infringement of
copyrights, the evidence “demonstrated at most sporadic violations, not widespread
104 Id. at 606.
107 Id. at 607 (“[A] deprivation, to fit the meaning of the due process clause, must be
intentional; a negligent act that causes unintended injury is not sufficient.”).
108 Marketing Information Masters v. The Board of Trustees of the California State
University, 2008 WL 2043289 (S.D. Cal. 2008).
violations by states.”109 The district court was unable to find the “pattern of
unremedied conduct” required under City of Boerne for a valid exercise of
Congress’s Fourteenth Amendment enforcement powers.110 The district court also
found that Congress had failed to adequately consider state remedies and had not
sufficiently tailored the CRCA to address only conduct that violates the due process
clause.111 Once again, the courts had made clear that constitutional violations relating
to intellectual property infringements by the states were not so pervasive as to
warrant abrogation of state sovereign immunity by Congress.
Prospective Injunctive Relief
With Congress unable to successfully abrogate state sovereign immunity, an
individual may only recover damages where a state has “unequivocally” expressed
its consent to suit through a clear waiver. There are, however, limited alternative
remedies available for individuals in those situations where the state has not waived
its immunity. While an aggrieved party may be able to recover monetary damages
under state contract, conversion, or takings law, the most likely relief for a plaintiff
in these situations would be to sue an individual state officer in his or her official
capacity for prospective injunctive relief.
The Eleventh Amendment does not bar suits for prospective injunctive relief
against state officials acting in violation of federal law.112 Although this provides no
avenue to recover monetary damages, an individual may obtain a court order forcing
state officials to cease their unlawful conduct. In Ex Parte Young, the Supreme Court
established this prospective remedy in order to mitigate wrongs resulting from the
state sovereign immunity defense, and to prevent continued violations of federal law113
by state officials. To satisfy the Ex Parte Young standard, the injured party must
allege an ongoing violation of federal law, seek only prospective relief, and establish114
that the officer has “some connection with the enforcement of the [illegal] act.”
Where the plaintiff satisfies this standard, a federal court may enter an injunction115
stopping the state official from acting in contravention of federal law. However,
the Court has not made the Ex Parte Young exception available to plaintiffs in all
instances of the violation of federal law by a state official.
109 Id. at 6.
112 Pennington Seed, Inc. v. Produce Exchange No. 299, 457 F.3d 1334, 1341 (Fed Cir.
113 209 U.S. 123 (1908).
114 Id. at 157.
115 Oxford University Press, Cambridge University Press, and Sage Publications recently
filed a complaint for declaratory judgment and injunctive relief in the U.S. District Court
for the Northern District of Georgia against four individual Georgia State officials. The
publishers seek to gain an injunction to stop the school from using the publishers’
copyrighted digital course packs. See, Katie Hafner, Publishers Sue Georgia State on
Digital Reading Matter, N.Y. TIMES, Apr. 16, 2008, at C2.
In 2006, the Federal Circuit considered the application of the Ex Parte Young
approach to remedy state violations of federal patent law. In Pennington Seed v.
Univ. of Arkansas, the plaintiff initially brought suit against the University of
Arkansas for patent infringements related to Pennington’s non-toxic feed grass.116
The district court dismissed the case on the basis of the university’s Eleventh
Amendment immunity. Pennington subsequently amended its complaint, dropped
the university as a defendant, and filed its claim for patent infringement against four
individual university officials; the chairman of the university board, the president of
the university, the chancellor of the university, and a professor. The district court
again dismissed the amended complaint on Eleventh Amendment grounds.
In affirming the district court’s decision, the Federal Circuit held that the
plaintiff had failed to establish a sufficient nexus between the named officials and the
enforcement of the illegal act.117 This connection must be more than a general
obligation to prevent the violation, the court explained; otherwise the individual is
simply being sued as a representative of the state.118 Although the officials named
in the complaint may have had a general obligation to oversee the university’s patent
policy, they themselves did not violate any federal law. Plaintiffs could not show a
sufficient causal connection between the named officials and the violation of federal
patent law. Additionally, even if the officials had neglected their duty to the
university to supervise the school’s use of patents, a court can only enjoin activity
that violates federal law; it cannot mandate that a state official “perform his or her
duty under state law.”119 Although the court may stop an illegal action, it cannot
mandate action unless an affirmative duty to act is created by federal law. No such
duty existed in Pennington Seed.
The Legislative Response
In the years following Florida Prepaid and College Savings Bank, Congress
repeatedly attempted to provide individuals with ways to recover from the states for
intellectual property infringement. In 1999, 2001, 2002, and 2003, Representative
Lamar Smith, Senator Patrick Leahy, and Representative Howard Coble each
introduced the “Intellectual Property Protection Restoration Act” (the Act) in their
respective chambers.120 The proposed law presented a three-pronged approach to
providing a remedy for intellectual property rights holders against states that engage
116 Pennington Seed, 457 F.3d at 1337-38.
117 Id. at 1342 (“[A] nexus between the violation of federal law and the individual accused
of violating that law requires more than simply a broad general obligation to prevent a
violation; it requires an actual violation of federal law by that individual.”).
118 Id. at 1342-43 (“There must be a connection between the state officer and the
enforcement of the act or else the suit will merely make him a representative of the state and
therefore improperly make the state a party to the suit.”).
119 Id. at 1343.
120 S. 1835, 106th Cong. (1999); S. 1611, 107th Cong. (2001); H.R. 3204, 107th Cong. (2001);
S. 2031, 107th Cong. (2002); S. 1191, 108th Cong. (2003); H.R. 2344, 108th Cong. (2003).
The first prong would have amended federal copyright, patent, and trademark
laws to bar a state from recovering for the infringement of a state-owned patent,
trademark, or copyright unless the state had previously waived its Eleventh
Amendment sovereign immunity and consented to suit under federal intellectual
property law.121 The Act would have used affirmative waiver as a condition to the
state’s receipt of damages under federal intellectual property law. By requiring states
to first waive their Eleventh Amendment immunity in the intellectual property area
before enjoying the protections of federal intellectual property law, this provision
created “reasonable incentives” for states to waive immunity without “oblig[ing]
them to do so.”122
This provision raised some constitutional concerns as to the apparent
voluntariness of the states’ decision to waive their sovereign immunity. Critics
argued that the waiver provision was simply a veiled attempt at the same
congressional abrogation of state sovereign immunity struck down by the Court in
Florida Prepaid and College Savings Bank.123 The state’s strong financial interest
in protecting its intellectual property may make the option of either waiving
immunity or relinquishing recovery for property infringements a forced waiver.124
Critics also argued that the Act violated the doctrine of unconstitutional conditions,
which at its core means “the government may not require a person to give up a
constitutional right ... in exchange for a discretionary benefit conferred by the
government.”125 The Act asked states to give up their constitutional right to state
sovereign immunity in exchange for the benefits of federal intellectual property
protections. Proponents of the Act responded by drawing a parallel to the use of
Congress’s spending power. Senator Leahy, who introduced the Senate companion
bill, argued before the Senate Committee on the Judiciary that much like attaching
a condition to the receipt of federal funds, Congress could attach a condition to the
receipt of federal intellectual property benefits.126
The second prong of the Act would have guaranteed an individual’s right to sue
a state official in his individual capacity for violation of federal intellectual property
121 H.R. 2344, 108th Cong., § 3.
122 Sovereign Immunity and the Protection of Intellectual Property: Hearing Before the S.
Comm. on the Judiciary, 107th Cong. (2002) (statement of Sen. Patrick Leahy).
123 Sovereign Immunity and the Protection of Intellectual Property: Hearing Before the S.
Comm. on the Judiciary, 107th Cong. (2002) (statement of William E. Thro, General
Counsel, Christopher Newport University) (the act would “permit Congress to circumvent
the antiabrogation holding of Seminole Tribe”).
124 Id. (“Threatening to exclude the state from enforcing its legitimate intellectual property
rights transforms the supposed ‘choice’ into outright coercion.”)
126 Sovereign Immunity and the Protection of Intellectual Property: Hearing Before the S.
Comm. on the Judiciary, 107th Cong. (2002) (statement of Sen. Patrick Leahy) ( “Either way,
the power to attach conditions to the federal benefit is part of the greater power to deny the
law.127 The provision would have statutorily reinforced the rights provided in Ex
Parte Young: mainly, the ability of an individual, notwithstanding the Eleventh
Amendment, to obtain prospective injunctive relief, and monetary damages where
applicable,128 against a state official. The Act would have clarified any confusion by
reviewing courts as to the applicability of Ex Parte Young to suits against a state for
intellectual property infringement.
The final prong of the bill would have abrogated state sovereign immunity in
limited circumstances. The abrogation provision of the Act was tailored directly to
the concerns presented by the Justices in Florida Prepaid and College Savings Bank.
The Act specifically limited abrogation to those instances where the property
infringement constitutes a violation of the due process clause of the Fourteenth
Amendment or the takings clause of the Fifth Amendment.129 The abrogation
provision was narrowly tailored to only include infringements amounting to
constitutional violations in an attempt to ameliorate the Supreme Court’s concern
over the “scope” of the previous abrogation provisions found in the CRCA, TRCA,
and PRCA. Critics argued, however, that this provision of the Act still would not
amount to a valid abrogation of state sovereign immunity, contending that regardless
of the narrowly tailored statute, the instances of unremedied intellectual property
infringements by the states simply do not occur with the frequency required to
classify abrogation as a use of the Fourteenth Amendment enforcement power.
The Act never made it out of committee. The 1999 Senate bill was referred to
the Committee on the Judiciary and never acted upon. In 2002, the Senate
Committee held hearings on the issue, but the bill never came to a vote. In 2003, the
House Subcommittee on Courts, the Internet, and Intellectual Property again held
hearings with no further action.
Potential Developments in the Relationship between
State Sovereign Immunity and Intellectual Property
In early 2006, the new Roberts Court issued a ruling concerning bankruptcy
law that triggered renewed questions relating to the application of state sovereign
immunity. In Central Virginia Community College v. Katz, the Court held that in
ratifying the Constitution, the states waived sovereign immunity as a defense to
bankruptcy suits.130 Relying on original intent and the legislative history of the
bankruptcy clause, the Court reasoned that the Framers’ concerns over a uniform
127 H.R. 2344, 108th Cong., § 4.
128 In limited circumstances a plaintiff may recover money damages from the official rather
than the state by suing a state official in his or her individual capacity. However, recovery
is only available where the official is acting outside of their official capacity and where the
official is not protected by qualified immunity (i.e., where the official’s actions were a
violation of “clearly established statutory or constitutional rights of which a reasonable
person would have known”), Crawford-El v. Britton, 523 U.S. 574, 588 (1998).
129 H.R. 2344, 108th Cong., § 5.
130 546 U.S. 356 (2006).
bankruptcy system, which gave rise to the bankruptcy clause in Article I, § 8,
superseded state sovereign immunity in that area.131 The Katz Court did not validate
the abrogation of state sovereign immunity under the Article I bankruptcy clause —
relying instead on a historical waiver pertaining only to bankruptcy. Therefore, the
case’s effect on intellectual property law is unclear. The case did mark, however, a
limitation on the dominance of state sovereign immunity over Congress’s Article I
powers. The Court did not consider the legislative history behind any of the other
Article I, § 8 powers, and was careful not to venture into the realm of intellectual
The Supreme Court has indicated a possible desire to reconsider the
relationship between state sovereign immunity and intellectual property in 2008 by
asking for the Solicitor General’s opinion in relation to an appeal in Biomedical
Patent Management Corp. v. California Department of Health Services.132 As
discussed above, Biomedical involved the potential waiver of sovereign immunity
under federal patent law by a state through affirmative litigation conduct. Asking the
Solicitor General for his opinion on a case is often considered a strong indication that
the Court will grant certiorari.133
With the departure of Justice O’Connor and Chief Justice Rehnquist, replaced
by Justice Alito and Chief Justice Roberts, there is the potential for a shift in the
Court’s state sovereignty jurisprudence. Florida Prepaid and College Savings Bank
were both 5-4 decisions with both Rehnquist and O’Connor in the majority. Katz,
one of Chief Justice Roberts’s early decisions after replacing Chief Justice Rehnquist,
was also a 5-4 decision, with O’Connor siding with the majority and Roberts
dissenting. Although both Roberts and Alito are considered to be state’s rights
advocates and would likely support a broader application of state sovereign
immunity, the appearance of two new votes on a closely divided court may very well
have unanticipated consequences. The combination of the Katz decision with the
potential grant of certiorari in Biomedical could mark a new development in the
application of state sovereign immunity and intellectual property law.
131 Id. at 377 (“The ineluctable conclusion, then, is that States agreed in the plan of the
Convention not to assert any sovereign immunity defense they might have had in
proceedings brought pursuant to ‘Laws on the subject of Bankruptcies.’”)
132 Supreme Court Invites Government’s Views on Petition in State Immunity Waiver Case,
PAT., TRADEMARK, & COPYRIGHT J., Apr. 25, 2008, at 671.