Re: Proposal to encourage waiver of state immunity for infringement

It'd be nice to see these bills go through, if only because the Supreme Court's decisions in Florida Prepaid have played merry hell with contract negotiations between some clients and state governments. I have taken to adding provisions in contracts with the state regarding a waiver of sovereign immunity for IP infringement. Whether or not a party contracting with the state ultimately gets such a provision, the issue has to be on the table, especially since states have a tendency to make it hard for people to sue them, even when there is a written contract between the state and the party.

BTW, Terry, I think the first occurrence of "There ain't no such thing as a free lunch" (or at least its abbreviation "TANSTAAFL") was a Robert Heinlein novel.

Kevin Grierson

Kevin W. Grierson
Willcox & Savage, P.C.
1800 Bank of America Center
One Commercial Place
Norfolk, Virginia 23510

mailto:kgrierson[_at_]wilsav.com
ph: 757/628-5603 fx: 757/628-5566
http://www.wilsav.com

>>> carroll[_at_]tjc.com 12/12/01 03:08AM >>>
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)