Infringement of Intellectual Property Rights and State Sovereign Immunity

Brian T. Yeh
Legislative Attorney

The Eleventh Amendment to the U.S. Constitution provides that "[t]he 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." Although the amendment appears to be focused on preventing suits against a state by non-residents in federal courts, the U.S. Supreme Court has expanded the concept of state sovereign immunity to reach much further than the literal text of the amendment, to include immunity from suits by the states' own citizens and immunity from suits under federal law within a state's own court system. 

As a result of two landmark Supreme Court decisions in 1999, Florida Prepaid and College Savings Bank, the Eleventh Amendment currently bars an individual from successfully seeking damages from a state for violations of federal intellectual property laws unless the state clearly consents to being sued through waiver, or Congress legitimately abrogates state sovereign immunity. Valid waiver exists only where a state has clearly submitted itself to federal jurisdiction. Courts have interpreted this rule to validate waiver in several scenarios: where a state voluntarily removes a case to federal court; where a state voluntarily initiates and participates in the litigation; where the case is part of one continuous action in which the state previously waived its immunity; where a state enacts legislation waiving its sovereign immunity; or where a state enters a contract containing a provision in which the state specifically submits to federal court jurisdiction in the case of a dispute. Absent these forms of clear waiver, a state does not relinquish its privilege of sovereign immunity under the Eleventh Amendment. 

Congress may limit state sovereign immunity to suit under federal intellectual property laws only by passing a law pursuant to its enforcement power under § 5 of the Fourteenth Amendment. A valid statute passed pursuant to § 5 will be limited in scope and remedy a pervasive and unredressed constitutional violation. The Supreme Court has previously invalidated congressional attempts to abrogate state sovereign immunity in intellectual property lawsuits against state governments. 

Where there has been no clear waiver by the state, nor abrogation of state sovereignty by Congress, a party cannot obtain damages from a state under federal law. The injured party may, however, sue the individual official responsible for the violation for prospective injunctive relief under the Ex Parte Young doctrine. In order to obtain this kind of non-monetary relief, the party must show a continued violation of federal law and an adequate connection between the named official and the actual violation. 

In response to Florida Prepaid and College Savings Bank, various bills have been introduced in previous sessions of Congress in an attempt to hold states accountable for violations of intellectual property rights. These proposals, however, never made it out of committee.


Date of Report: July 30, 2010
Number of Pages: 23
Order Number: RL34593
Price: $29.95

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