Proposal to encourage waiver of state immunity for infringement

I read in the ABA's Section of IP Law's bulletin that arrived today that two bills have been introduced to restrict the application of Eleventh Amendment immunity for patent, copyright and trademark infringement. I haven't seen it mentioned here, so I thought I'd point it out.

The bills are H.R. 3204 and S. 1611 (the ABA IP section bulletin has a typo, and mistakenly refers to S. 1661), introduced November 1.

The basic operation of the proposed bills, like the set introduced last Congress, is to prohibit a state from asserting a patent, copyright or trademark, unless the state also waives its Eleventh Amendment immunity. The bill requires a waiver either before January 1, 2004 or before the commencement of infringement.

The bill generally applies if the IP was owned by the state at any time, although it excepts out enforcement by bona fide purchasers for value who had no reason to know of the state's prior ownership or if the limitation on enforcement would impair a previously executed contract (an apparent nod to Article 1, section 10 of the Constitution).

It also makes clear that remedies are available against state officers and employees to the same extent as against private individuals.

The above is, of course, an oversimplification of a 13-page bill, but close enough to provide a synopsis.

The substantive modifications to the patent, copyright and trademark laws are in section 3, subsections (a), (b) and (c), respectively; the provision regarding state officers and employees is in section 4.

The bill is similar in principle as, but has a less detailed approach than, S. 1835 (introduced by Senator Leahy in the 106th Congress last year). I've always felt this was a fair approach. I really have no problem with a state asserting its immunity; what I have a problem with is a state asserting its immunity, as a defendant, while continuing to be able to play on the plaintiff side of the game.

The bills can be reviewed by going to <http://thomas.loc.gov> and entering the bill numbers (H.R. 3204 or S. 1611) in the "by bill number" blank at the top of the page and searching.

-- 
Terry Carroll        |  "There ain't no such thing as a free lunch."
Santa Clara, CA      |   - Washington Legal Foundation v. Legal 
carroll[_at_]tjc.com      |     Foundation of Washington, no. 98-35154
Modell delendus est  |     (9th Cir. Nov. 14, 2001) (Kozinski, dissenting)