WS>>(2)[DMCA_Discuss] On State Sovereignty and Senate Bill 2031, Leahy's "IP" Protection Restoration Act

carl william spitzer iv cwsiv_2nd at JUNO.COM
Tue May 21 14:14:10 MDT 2002


          The  1980 Bayh-Dole Act has been highly  successful  in
     jump-starting  technology transfer and economic  development
     through universities around the country.  The pending legis-
     lation  threatens  to take this away, and could  also  cause
     productive faculty members to leave state universities  such
     as  ________.  Governor ________________, and  his  counter-
     parts in other states, have encouraged economic  development
     by  using universities and university-associated  incubators
     to promote biotechnology and other high technology business-
     es.  The effect of this bill could be to kill these  nascent
     efforts  before  they  even have a chance  to  get  off  the
     ground.

          By  contrast,  if the bill were  amended  to  recognize
     waivers  of sovereign immunity made by or on behalf of  bona
     fide  state universities such as ___________, then it  would
     not be nearly so devastating to universities, and the sover-
     eign  immunity waivers sought by the bill's  proponents  are
     considerably more likely to be granted.

          Thank you for looking into this matter, and for consid-
     ering the enclosed amendment to the bill.

          Very truly yours,

          Enclosure

          ----

          (The [Proposed Revised] Bill:)

          Intellectual  Property  Protection Restoration  Act  of
     2002 (Introduced in the Senate)

          S 2031 IS

          107th CONGRESS

          2d Session

          S. 2031

          To restore Federal remedies for infringements of intel-
     lectual property by States, and for other purposes.

          IN THE SENATE OF THE UNITED STATES

          March 19, 2002


          A  BILL    [Proposed amendments to the bill  are  high-
     lighted.]

          To restore Federal remedies for infringements of intel-
     lectual property by States, and for other purposes.

          Be  it enacted by the Senate and House  of  Representa-
     tives of the United States of America in Congress assembled,

     SECTION 1. SHORT TITLE; REFERENCES.

     (a) SHORT TITLE- This Act may be cited as the  `Intellectual
          Property Protection Restoration Act of 2002'.


     (b) REFERENCES-

     (1) Any  reference in this Act to the Trademark Act of  1946
          shall  be  a reference to the Act entitled `An  Act  to
          provide  for the registration and protection of  trade-
          marks used in commerce, to carry out the provisions  of
          certain  international conventions, and for other  pur-
          poses', approved July 5, 1946 (15 U.S.C. 1051 et seq.).

     <AMEND/>(2) Any reference in this Act to a State  university
          shall mean a State instrumentality that is an  institu-
          tion  of  higher education under 20 U.S.C. 1001;  or  a
          land  grant college or university under the First  Mor-
          rill  Act of July 2, 1862 or the Second Morrill Act  of
          August  30, 1890; or a State instrumentality that is  a
          system that includes more than one such institution  of
          higher education.</AMEND>

     SEC. 2. PURPOSES.

     The purposes of this Act are to--

      (1) help  eliminate  the unfair commercial  advantage  that
           States  and  their instrumentalities now hold  in  the
           Federal intellectual
           property  system  because of their ability  to  obtain
           protection under the United States patent,  copyright,
           and trademark laws while remaining exempt from liabil-
           ity for infringing the rights of others;

      (2) promote technological innovation and artistic  creation
           in furtherance of the policies underlying Federal laws
           and  international treaties relating  to  intellectual
           property;

      (3) reaffirm the availability of prospective relief against
           State  officials who are violating or who threaten  to
           violate Federal intellectual property laws; and

      (4) abrogate State sovereign immunity in cases where States
           or  their  instrumentalities, officers,  or  employees
           violate  the United States Constitution by  infringing
           Federal intellectual property.

     SEC. 3. INTELLECTUAL PROPERTY REMEDIES EQUALIZATION.

       (a) AMENDMENT  TO  PATENT LAW- Section 287  of  title  35,
           United  States Code, is amended by adding at  the  end
           the following:

       `(d)(1)  No  remedies under section 284 or  289  shall  be
           awarded  in any civil action brought under this  title
           for infringement of a patent issued on or after  Janu-
           ary  1,  2002 <REVISE/>2003</REVISE>, if  a  State  or
           State instrumentality is or was at any time the  legal
           or beneficial owner of such patent, except upon  proof
           that--

       `(A)

      (1) on  or  before the date the infringement  commenced  or
           January  1, 2004 2005, whichever is later,  the  State
           has waived its immunity, under the eleventh  amendment
           of the United States Constitution and under any  other
           doctrine  of sovereign immunity, from suit in  Federal

           court brought against the State or any of its  instru-
           mentalities,  for  any  infringement  of  intellectual
           property protected under Federal law; or

      <AMEND/>(2) if a State university is or was at any time the
           legal  or beneficial owner of such patent, then on  or
           before the date the infringement commenced or  January
           1, 2005, whichever is later, immunity has been  waived
           by  or  on behalf of the State university,  under  the
           eleventh  amendment of the United States  Constitution
           and  under any other doctrine of  sovereign  immunity,
           from suit in Federal court brought against that  State
           university,  for  any  infringement  of   intellectual
           property protected under Federal law;</AMEND>

      and

       `(B) such waiver was made in accordance with the constitu-
           tion and laws of the State, and remains effective.

       `(2) The limitation on remedies under paragraph (1)  shall
           not apply with respect to a patent if--

       `(A) the limitation would materially and adversely  affect
           a  legitimate contract-based expectation in  existence
           before January 1, 2002 <REVISE/>2003</REVISE>; or

       `(B) the party seeking remedies was a bona fide  purchaser
           for  value  of  the patent, and, at the  time  of  the
           purchase,  did  not know and  was  reasonably  without
           cause to believe that a State or State instrumentality
           was once the legal or beneficial owner of the patent.

       `(3) The limitation on remedies under paragraph (1) may be
           raised  at  any  point in a  proceeding,  through  the
           conclusion of the action. If raised before January  1,
           2004  2005,  the court may stay the proceeding  for  a
           reasonable  time, but not later than January  1,  2004
           2005, to afford the State an opportunity to waive  its
           immunity as provided in paragraph (1).'.

       (b) AMENDMENT  TO COPYRIGHT LAW- Section 504 of title  17,
           United  States Code, is amended by adding at  the  end
           the following:

       `(e) LIMITATION ON REMEDIES IN CERTAIN CASES-

       `(1) No  remedies under this section shall be  awarded  in
           any  civil  action brought under this  title  for  in-
           fringement of an exclusive right in a work created  on
           or after January 1, 2002 <REVISE/>2003</REVISE>, if  a
           State  or State instrumentality is or was at any  time
           the  legal or beneficial owner of such  right,  except
           upon proof that--

       `(A)

       (1) on  or before the date the infringement  commenced  or
           January  1, 2004 2005, whichever is later,  the  State
           has waived its immunity, under the eleventh  amendment
           of the United States Constitution and under any  other
           doctrine  of sovereign immunity, from suit in  Federal
           court brought against the State or any of its  instru-
           mentalities,  for  any  infringement  of  intellectual
           property protected under Federal law; or


       <AMEND/>(2)  if a State university is or was at  any  time
           the legal or beneficial owner of such patent, then  on
           or  before  the  date the  infringement  commenced  or
           January 1, 2005, whichever is later, immunity has been
           waived by or on behalf of the State university,  under
           the eleventh amendment of the United States  Constitu-
           tion and under any other doctrine of sovereign immuni-
           ty,  from suit in Federal court brought  against  that
           State university, for any infringement of intellectual
           property protected under Federal law;</AMEND>

       and

       `(B) such waiver was made in accordance with the constitu-
           tion and laws of the State, and remains effective.

       `(2) The limitation on remedies under paragraph (1)  shall
           not apply with respect to an exclusive right if--

       '(A) the limitation would materially and adversely  affect
           a  legitimate contract-based expectation in  existence
           before January 1, 2002 <REVISE/>2003</REVISE>; or

       `(B) the party seeking remedies was a bona fide  purchaser
           for value of the exclusive right, and, at the time  of
           the purchase, did not know and was reasonably  without
           cause to believe that a State or State instrumentality
           was once the legal or beneficial owner of the right.

       `(3) The limitation on remedies under paragraph (1) may be
           raised  at  any  point in a  proceeding,  through  the
           conclusion of the action. If raised before January  1,
           2004  <REVISE/>2005</REVISE>, the court may  stay  the
           proceeding  for a reasonable time, but not later  than
           January 1, 2004 <REVISE/>2005</REVISE>, to afford  the
           State an opportunity to waive its immunity as provided
           in paragraph (1).'.

       (c) AMENDMENT  TO TRADEMARK LAW- Section 35 of the  Trade-
           mark Act of 1946 (15 U.S.C. 1117) is amended by adding
           at the end the following:

       `(e) LIMITATION ON REMEDIES IN CERTAIN CASES-

       `(1) No  remedies under this section shall be  awarded  in
           any  civil action arising under this Act for a  viola-
           tion  of any right of the registrant of a mark  regis-
           tered  in the Patent and Trademark Office on or  after
           January  1, 2002 <REVISE/>2003</REVISE>, or any  right
           of  the owner of a mark first used in commerce  on  or
           after  January  1, 2002 <REVISE/>2003</REVISE>,  if  a
           State  or State instrumentality is or was at any  time
           the  legal or beneficial owner of such  right,  except
           upon proof that--

       `(A)

      (1) on or before the date the violation commenced or  Janu-
           ary  1, 2004 2005, whichever is later, the  State  has
           waived  its immunity, under the eleventh amendment  of
           the  United  States Constitution and under  any  other
           doctrine  of sovereign immunity, from suit in  Federal
           court brought against the State or any of its  instru-
           mentalities,  for  any  infringement  of  intellectual
           property protected under Federal law; or


      <AMEND/>(2) if a State university is or was at any time the
           legal  or beneficial owner of such patent, then on  or
           before the date the infringement commenced or  January
           1, 2005, whichever is later, immunity has been  waived
           by  or  on behalf of the State university,  under  the
           eleventh  amendment of the United States  Constitution
           and  under any other doctrine of  sovereign  immunity,
           from suit in Federal court brought against that  State
           university,  for  any  infringement  of   intellectual
           property protected under Federal law;</AMEND>

      and

      `(B) such waiver was made in accordance with the  constitu-
           tion and laws of the State, and remains effective.

      `(2) The  limitation on remedies under paragraph (1)  shall
           not apply with respect to a right of the registrant or
           owner of a mark if--

      `(A) the limitation would materially and adversely affect a
           legitimate  contract-based  expectation  in  existence
           before January 1, 2002 <REVISE/>2003</REVISE>; or

      `(B) the  party seeking remedies was a bona fide  purchaser
           for  value of the right, and, at the time of the  pur-
           chase,  did not know and was reasonably without  cause
           to  believe that a State or State instrumentality  was
           once the legal or beneficial owner of the right.

      `(3) The limitation on remedies under paragraph (1) may  be
           raised  at  any  point in a  proceeding,  through  the
           conclusion of the action. If raised before January  1,
           2004  <REVISE/>2005</REVISE>, the court may  stay  the
           proceeding  for a reasonable time, but not later  than
           January 1, 2004 <REVISE/>2005</REVISE>, to afford  the
           State an opportunity to waive its immunity as provided
           in paragraph (1).'.

       (d) TECHNICAL AND CONFORMING AMENDMENTS-

       (1) AMENDMENTS TO PATENT LAW-

       (A) IN  GENERAL-  Section 296 of title 35,  United  States
           Code, is repealed.

       (B) TABLE  OF SECTIONS- The table of sections for  chapter
           29  of  title 35, United States Code,  is  amended  by
           striking the item relating to section 296.

       (2) AMENDMENTS TO COPYRIGHT LAW-

       (A) IN  GENERAL-  Section 511 of title 17,  United  States
           Code, is repealed.

       (B) TABLE OF SECTIONS- The table of sections for chapter 5
           of title 17, United States Code, is amended by  strik-
           ing the item relating to section 511.

       (3) AMENDMENTS TO TRADEMARK LAW- Section 40 of the  Trade-
           mark Act of 1946 (15 U.S.C. 1122) is amended--

       (A) by striking subsection (b);

       (B) in subsection (c), by striking `or (b)' after `subsec-
           tion (a)'; and


       (C) by redesignating subsection (c) as subsection (b).

     SEC. 4.  CLARIFICATION OF REMEDIES AVAILABLE  FOR  STATUTORY
          VIOLATIONS BY STATE OFFICERS AND EMPLOYEES.

     In any  action against an officer or employee of a State  or
          State  instrumentality for any violation of any of  the
          provisions  of title 17 or 35, United States Code,  the
          Trademark Act of 1946, or the Plant Variety  Protection
          Act  (7 U.S.C. 2321 et seq.), remedies shall be  avail-
          able against the officer or employee in the same manner
          and  to the same extent as such remedies are  available
          in  an action against a private individual  under  like
          circumstances.  Such  remedies  may  include   monetary
          damages  assessed  against  the  officer  or  employee,
          declaratory  and  injunctive  relief,  costs,  attorney
          fees,  and destruction of infringing articles, as  pro-
          vided under the applicable Federal statute.

     SEC. 5.  LIABILITY OF STATES FOR  CONSTITUTIONAL  VIOLATIONS
          INVOLVING INTELLECTUAL PROPERTY.

       (a) DUE PROCESS VIOLATIONS- Any State or State  instrumen-
           tality that violates any of the exclusive rights of  a
           patent owner under title 35, United States Code, of  a
           copyright  owner, author, or owner of a mask  work  or
           original design under title 17, United States Code, of
           an  owner or registrant of a mark used in commerce  or
           registered  in the Patent and Trademark  Office  under
           the  Trademark Act of 1946, or of an owner of  a  pro-
           tected  plant variety under the Plant Variety  Protec-
           tion  Act  (7 U.S.C. 2321 et seq.), in a  manner  that
           deprives  any person of property in violation  of  the
           fourteenth  amendment of the United  States  Constitu-
           tion, shall be liable to the party injured in a  civil
           action in Federal court for compensation for the  harm
           caused by such violation.

       (b) TAKINGS VIOLATIONS-

      (1) IN  GENERAL-  Any State or State  instrumentality  that
           violates any of the exclusive rights of a patent owner
           under  title  35, United States Code, of  a  copyright
           owner,  author,  or owner of a mask work  or  original
           design under title 17, United States Code, of an owner
           or registrant of a mark used in commerce or registered
           in the Patent and Trademark Office under the Trademark
           Act  of  1946,  or of an owner of  a  protected  plant
           variety  under  the Plant Variety  Protection  Act  (7
           U.S.C. 2321 et seq.), in a manner that takes  property
           in violation of the fifth and fourteenth amendments of
           the United States Constitution, shall be liable to the
           party  injured in a civil action in Federal court  for
           compensation for the harm caused by such violation.

      (2) EFFECT  ON  OTHER RELIEF- Nothing  in  this  subsection
           shall  prevent  or affect the ability of  a  party  to
           obtain declaratory or injunctive relief under  section
           4 of this Act or otherwise.

      (c) COMPENSATION-  Compensation  under  subsection  (a)  or
           (b)--

      (1) may include actual damages, profits, statutory damages,
           interest,  costs,  expert witness fees,  and  attorney

           fees,  as set forth in the appropriate  provisions  of
           title 17 or 35, United States Code, the Trademark  Act
           of 1946, and the Plant Variety Protection Act; and

      (2) may not include an award of treble or enhanced  damages
           under  section  284 of title 35, United  States  Code,
           section  504(d) of title 17, United States Code,  sec-
           tion  35(b)  of the Trademark Act of 1946  (15  U.S.C.
           1117  (b)),  and section 124(b) of the  Plant  Variety
           Protection Act (7 U.S.C. 2564(b)).

       (d) BURDEN OF PROOF- In any action under subsection (a) or
           (b)--             (1) with respect to any matter  that
           would  have to be proved if the action were an  action
           for infringement brought under the applicable  Federal
           statute,  the burden of proof shall be the same as  if
           the action were brought under such statute; and

       (2) with  respect to all other matters, including  whether
           the State provides an adequate remedy for any depriva-
           tion  of  property proved by the injured  party  under
           subsection (a), the burden of proof shall be upon  the
           State or State instrumentality.

       (e) EFFECTIVE DATE- This section shall apply to violations
           that  occur on or after the date of enactment of  this
           Act.

     SEC. 6. RULES OF CONSTRUCTION.

       (a) JURISDICTION- The district courts shall have  original
           jurisdiction  of  any action arising  under  this  Act
           under section 1338 of title 28, United States Code.
       (b) BROAD  CONSTRUCTION-  This Act shall be  construed  in
           favor of a broad protection of intellectual  property,
           to  the maximum extent permitted by the United  States
           Constitution.


       (c) SEVERABILITY-  If  any provision of this  Act  or  any
           application of such provision to any person or circum-
           stance  is held to be unconstitutional, the  remainder
           of  this Act and the application of the  provision  to
           any other person or circumstance shall not be  affect-
           ed.

       _______________________________________________


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