Re: State Susceptibility to Suit for Copyright and Patent Infringement

From: Dan L Burk <BURKDANL[_at_]shu.edu>
Date: Tue, 28 Jul 1998 13:14:59 -0400

On 07/27/98, Bill Scanlon <wscanlon[_at_]execpc.com> wrote:
>
> The Fifth Paragraph of the Fourteenth Amendment gives Congress
> the power to legislate measures to enforce the Amendment. When
> Congress, several years before Seminole Tribe was decided by the
> Supreme Court, adopted the legislation making states susceptible in
> the same way as private parties to suits in the federal courts for
> patent and copyright infringement, Congress believed that it was
> empowered to do so in part by its power under Article I, Section 8,
> Clause 8 of the Constitution to legislate with respect to copyrights
> and patents and in part by its power under the Fifth Paragraph of the
> Fourteenth Amendment to the Constitution to legislate to insure that
> no state would "deny any person... property... without due process
> of law."
 

Well, that's the theory, anyway. I'm not sure how much of the Fourteenth Amendment argument is a hindsight gloss on the legislation. Having been somewhat involved in drafting the patent legislation at issue in College Savings Bank, I don't think much consideration was given to the section 5 powers at all -- we were pretty much focused on Union Gas. In fact, the patent legislation itself was a bit of an afterthought; we were afraid that if Congress passed the copyright amendment (which the publishing industry had lobbied hard for) without saying something about patents, that would give rise to an implication that Congress didn't care about patent infringement by the states (which could have been significant under Atascadero/Union Gas).

Analytically, I agree that patents and copyrights should be treated similarly, but operationally there is no particular reason that they must be -- Congress could authorize retrospective relief for one and not the other. Given the footnotes in Seminole Indians, I would hope the Supreme Court would reslove the disparity, but it is not impossible to say "patents are actionable, copyrights aren't."

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Dan L. Burk
Seton Hall University
burkdanl[_at_]shu.edu

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Received on Tue Jul 28 1998 - 17:07:19 GMT