Re: State government immunity

On Fri, 08 May 1998, Mark Lemley <mlemley[_at_]mail.law.utexas.edu> wrote:
>
> Terry Carroll <carroll[_at_]tjc.com> writes:
> >
> > I would like to see an amendment to the patent, copyright and trademark
> > acts to the effect that no state may obtain or assert an interest in a
> > patent, copyright or trademark unless it has waived its immunity under
> > the act.
> >
> > I would consider this extremely fair, and constitutional. A state can
> > play in the patent, copyright and trademark arenas if it likes. It can
> > also abstain from those areas and instead assert its immunity. What it
> > shouldn't be able to do is be able to participate as a plaintiff without
> > being liable to participate as a defendant.
> >
> ***********
>
> That's a great idea.
>
> Is there an unconstitutional conditions problem?

I think there might be an unconstitutional conditions problem.

In Parden v. Terminal Railway, 377 U.S. 184 (1964), the Supreme Court held that a state constructively waives its immunity when it engages in an activity the right to which Congress has made conditional upon amenability to suit in federal court. The Court has retreated from this holding in later decisions, however. For example, in Employees of Department of Public Health & Welfare v. Department of Health & Welfare, 411 U.S. 279 (1973), the Court limited Parden to cases in which the state has engaged in nontraditional government functions. Moreover, two of the recent cases interpreting the Remedy Clarification Acts (College Savings Bank and Chavez) read Seminole Tribe as overruling Parden in its entirety, i.e., as holding that Congress cannot abrogate state sovereign immunity at all when legislating pursuant to its Article I powers. For a good argument that Seminole does not overrule Parden altogether, and that Congress may condition the states' ability to engage in certain activities upon their consent to amenability to suit in federal court, see Kit Kinports, Implied Waiver After Seminole Tribe, 82 Minn. L. Rev. 793 (1998). Even if Kinports is right, however, that Parden retains some of its vitality, the constructive waiver theory probably wouldn't work in situations in which the state is involved in "traditional" state functions such as education and public works--two of the more common situations in which states are likely to use intellectual property.

Thomas F. Cotter
Associate Professor of Law
University of Florida College of Law
Gainesville, Florida 32611-7625
(352) 392-2235 (office)
(352) 392-3005 (fax)
cotter[_at_]law.ufl.edu Received on Mon May 11 1998 - 13:00:10 GMT