How the Spending Clause Can Solve the Dilemma of State Sovereign Immunity from Intellectual Property Suits

By Cotner, Jennifer | Duke Law Journal, November 2001 | Go to article overview

How the Spending Clause Can Solve the Dilemma of State Sovereign Immunity from Intellectual Property Suits


Cotner, Jennifer, Duke Law Journal


INTRODUCTION

The United States Supreme Court held in two cases, Florida Prepaid Postsecondary Education Expense Board v. College Savings Bank ("Florida Prepaid") (1) and College Savings Bank v. Florida Prepaid Postsecondary Education Expense Board ("College Savings Bank"), (2) that states' Eleventh Amendment immunity from patent and trademark infringement suits was not waived or properly abrogated by Congress. (3) After these decisions were handed down, Congress almost immediately announced hearings to determine what kind of legislation could sidestep these holdings. (4) Congress realized that allowing states to have immunity from intellectual property infringement actions could have devastating effects on the intellectual property system. The former Register of Copyrights, Barbara Ringer, testified before Congress over ten years ago to the breadth of state usage of copyrighted materials:

   States and their instrumentalities are major users of copyrighted material
   of all sorts--not only the familiar forms of printed books and periodicals
   but the whole range of creative expression ... dance and drama, music and
   sound recordings; photographs and filmstrips; motion pictures and video
   recordings; computer software and chips; pictorial and graphic material,
   maps and architectural plans, and so forth, ad infinitum. State
   exploitation of copyrighted works is by no means limited to uses that can
   be called educational or nonprofit. They include large publishing
   enterprises, computer networks, off-air taping, public performance and
   display, radio and television broadcasting, and cable transmissions, to
   name only the most obvious. (5)

After Florida Prepaid and College Savings Bank, states are free in essence to exploit these kinds of materials anytime they wish. The intellectual property issue is a pressing one, and Congress must act to remedy the situation immediately. (6)

Following a brief discussion of the legal background, this Note explores the alternatives presently open to Congress and concludes that Congress's best option is to pass a measure that would condition the states' receipt of federal intellectual property rights on their waiver of immunity in infringement actions against them. This "conditional waiver" proposal would encourage individual states to waive their sovereign immunity voluntarily. Under this system, no state would be able to acquire a federal intellectual property right unless it agreed to waive its sovereign immunity from future intellectual property suits.

Two recent articles suggest that this kind of bill would not be constitutional in light of recent Supreme Court decisions that have expanded the state governments' power at the expense of the federal government. (7) However, as this Note demonstrates, the conditional waiver bill has the best chance of passing constitutional muster. It will be the most effective means to accomplish Congress's goal--to make states responsible for their acts of infringement just like everyone else. (8)

I. THE ELEVENTH AMENDMENT AND ITS LOOPHOLES

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, or by Citizens or Subjects of any Foreign State." (9) The Supreme Court effectively has extended the breadth of the amendment, holding that States are protected not only from suits initiated by citizens of other states, but also from suits by citizens of the defendant state in federal court. (10)

Presently, a potential plaintiff may circumvent the Eleventh Amendment using only three mechanisms. (11) The plaintiff may argue that the state waived its immunity; (12) that Congress abrogated the state's sovereign immunity; or that a state official may be sued under the Ex Parte Young doctrine. (13) To subject states to intellectual property lawsuits, Congress must use one of these mechanisms. …

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