[Federal Register Volume 65, Number 45 (Tuesday, March 7, 2000)]
[Notices]
[Pages 11987-11988]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 00-5511]


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DEPARTMENT OF COMMERCE

Patent and Trademark Office

[Docket No. 00302058-0058-01]


Notice of Conference on State Sovereign Immunity and Intellectual 
Property Rights

AGENCY: Patent and Trademark Office, Commerce.

ACTION: Notice of meeting.

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SUMMARY: The U.S. Patent and Trademark Office (USPTO) is announcing 
that it will hold a one-day conference on issues related to recent 
Supreme Court decisions concerning the sovereign immunity of States and 
Federal intellectual property rights. The conference will bring 
together a number of constitutional law and intellectual property 
scholars as well as individuals who can offer the perspective of state 
governments on these issues.

DATES: The conference will be held on Friday, March 31, 2000, beginning 
at 9:30 a.m. Requests to participate in the conference must be made no 
later than March 27, 2000. Written comments may be submitted by no 
later than April 14, 2000.

ADDRESSES: The conference will be held at the Department of Commerce, 
Fourteenth Street and Constitution Avenue, N.W., Washington, DC 20230. 
Conference attendees should enter the Commerce Department Building at 
its main entrance on 14th Street. Directions to the conference location 
within the building will be available in the main lobby off 14th 
Street.
    Requests to attend in the conference should be made to Justin 
Hughes by electronic mail to [email protected], by facsimile 
transmission marked to his attention at (703) 305-8885, or by mail 
marked to his attention and addressed to the Office of Legislative and 
International Affairs, U.S. Patent and Trademark Office, Box 4, 
Department of Commerce, Washington, DC 20231. Conference attendees will 
be accepted as their requests are received. Should space considerations 
cause a need to limit attendees, requests will be honored on a first-
come, first-serve basis according to the time and date of each request.
    Arrangements for conference panelists will be made separately from 
conference attendees. Conference attendees will be provided with 
audience-style seating to watch and listen to panel discussions. 
Attendees may be given the opportunity to participate in question and 
answer periods attendant to certain conference panel sessions and may 
provide written comments to the address listed above.

FOR FURTHER INFORMATION CONTACT: Justin Hughes, by telephone at (703) 
305-9300, by electronic mail to [email protected], by facsimile 
transmission marked to his attention at (703) 305-8885, or by mail 
marked to his attention and addressed to the Office of Legislative and 
International Affairs, U.S. Patent and Trademark Office, Box 4, 
Department of Commerce, Washington, DC 20231.

SUPPLEMENTARY INFORMATION: In 1999, the U.S. Supreme Court issued a 
series of opinions addressing the right of States to assert sovereign 
immunity under the Eleventh Amendment of the U.S. Constitution. Two of 
these cases directly concerned Federal intellectual property statutes. 
In Florida Prepaid Postsecondary Education Expense Board v. College 
Savings Bank, 119 S. Ct. 2199 (1999), a 5-4 majority of the Court held 
that States could assert Eleventh Amendment sovereign immunity to 
shield themselves from suits under the Patent Act. In Florida Prepaid, 
a private bank alleged that a Florida state agency was infringing the 
bank's patent on a savings method tailored for college tuition 
expenses. The state agency claimed sovereign immunity from suit under 
the Eleventh Amendment. While recognizing that Congress has the power 
to abrogate Eleventh Amendment sovereign immunity under section 5 of 
the Fourteenth Amendment, the Court reasoned that Congress' passage of 
the Patent and Plant Variety Protection Remedy Clarification Act in 
1992 did not validly abrogate state sovereign immunity because Congress 
had failed to tailor its legislative abrogation of Eleventh Amendment 
immunity to remedy or prevent the conduct at issue.
    In a companion case, College Savings Bank v. Florida Prepaid 
Postsecondary Education Expense Board, 119 S. Ct. 2219 (1999), the 
Court considered whether states can be sued under Sec. 43(a) of the 
Lanham Act (15 U.S.C. 1125(a)) where the Trademark Remedy Clarification 
Act (TRCA) had (1) Amended Sec. 43(a) by defining ``any person'' to 
include state and state instrumentalities, and (2) Expressly abrogated 
state sovereign immunity for Sec. 43(a) suits. In College Savings, a 
Florida state agency had raised an Eleventh Amendment sovereign 
immunity defense against a Sec. 43(a) claim that the state agency had 
made misstatements about its tuition savings plan in brochures and 
annual reports. Applying an analysis similar to Florida Prepaid, the 
same 5-4 majority of the Court held that TRCA had not validly abrogated 
the state sovereign immunity under the Eleventh Amendment. The Court 
also concluded that Florida had not voluntarily waived its sovereign 
immunity through its activities in interstate commerce which gave rise 
to the lawsuit. Although the College Savings case did not directly 
address infringement of a federally registered trademark, the holding 
of the case is widely viewed as ensuring that states may properly raise 
Eleventh Amendment sovereign immunity in trademark infringement actions 
brought against them under the Lanham Act.
    The Florida Prepaid and College Savings cases (the Florida Prepaid 
decisions) followed the Supreme Court's ruling in Seminole Tribe v. 
Florida, 517 U.S. 44 (1996), which established that Congress may 
authorize suits against states in Federal court only pursuant to its 
authority under section 5 of the Fourteenth Amendment and not pursuant 
to any Article I power. The Florida Prepaid decisions are viewed as 
further clarifying and restricting the conditions under which states 
can be made amenable to suit in Federal court, i.e., either through 
their own waiver of sovereign immunity or through Congressional 
abrogation of that immunity.
    One lower court of appeals has concluded that the Florida Prepaid 
analysis applies equally to copyright suits. In Chavez v. Arte Publico 
Press, a copyright owner sued the University of Houston Press for 
copyright and trademark violations. After a Fifth Circuit panel 
initially concluded that the University of Houston had impliedly waived 
its sovereign immunity, Chavez

[[Page 11988]]

v. Arte Publico Press, 59 F.3d 539, 548 (5th Cir. 1995), the University 
of Houston petitioned for certiorari. The Supreme Court remanded the 
case for reconsideration in light of its decision in Seminole Tribe. 
See University of Houston v. Chavez, 517 U.S. 1184 (1996). On remand, 
the Circuit panel majority concluded that Congress could not condition 
a state's activities that are regulable by Federal law upon their 
``implied consent'' to be sued in Federal court, 157 F.3d 282, 287 (5th 
Cir. 1998), and that Congress could not use the Fourteenth Amendment to 
enforce the copyright and trademark laws, 157 F.3d at 287, 290. The 
Florida Prepaid decisions prompted the Circuit to return the case once 
again to the original panel for further consideration. Last month, that 
court decided that the University of Houston enjoyed sovereign immunity 
against suit in Federal court for copyright violations. Chavez v. Arte 
Publico Press, No. 93-2881, 2000 U.S. App. LEXIS 2490 (5th Cir. Feb. 
18, 2000).
    The final disposition of the Chavez case was in keeping with 
another Fifth Circuit panel's earlier conclusion that the State of 
Texas could raise sovereign immunity against a claim of copyright 
infringement by an artist who believes his work was infringed by the 
design of a Texas license plate, Rodriguez v. Texas Commission on the 
Arts, 53 U.S.P.Q.2d 1383 (5th Cir. 2000). In Rodriguez, the Circuit 
panel concluded that the rationale of Florida Prepaid applied squarely 
to copyright law and that the Copyright Clarification Act of 1994 (17 
U.S.C. Sec. 511) did not validly abrogate Texas' sovereign immunity 
against suits for copyright infringement. 53 U.S.P.Q.2d at 1384. 
Together, all of these cases create uncertainty for the uniformity and 
consistency of the United States intellectual property system and could 
raise substantial concerns for our international obligations in the 
field of intellectual property.
    To address the issues raised by these cases, the USPTO has asked 
several Constitutional and intellectual property scholars to serve as 
panelists for a March 31 conference. The conference will also include 
state officials. Panelists for the March 31 conference will likely 
include the following individuals: Preeta Bansal (Solicitor-General of 
New York), Erwin Chemerinsky (University of Southern California Law 
School), Dan Farber (University of Minnesota Law School), Jane Ginsburg 
(Columbia Law School), Marci Hamilton (Cardozo Law School), John 
Jeffries (University of Virginia Law School), Mark Lemley (Boalt Law 
School, Berkeley), Daniel Meltzer (Harvard Law School), Daniel 
Schweitzer (National Association of Attorneys-General), Eugene Volokh 
(UCLA Law School), and Ernie Young (University of Texas Law School). 
(Institutions and affiliations are listed for identification purposes 
only.) Other panelists are also being considered at this time.
    The March 31 conference is intended to allow the panelists to 
engage in a broad discussion of all the issues raised by the Florida 
Prepaid cases. Conference attendees may provide their individual views, 
observations, proposals, and reports, both during and for a two week 
period after the conference. All such materials received by PTO will be 
made available to the public. PTO anticipates integrating the work of 
individual panelists into a final report from the conference, which 
will also be made available to the public.
    The USPTO anticipates that there will be several morning and 
afternoon sessions, each devoted to specific issues, including, but not 
limited to: (1) The Ex parte Young doctrine as it applies to 
intellectual property cases; (2) Possible legislative approaches to 
abrogate Eleventh Amendment state sovereign immunity in intellectual 
property cases; (3) Possible systems for state waiver of Eleventh 
Amendment immunity, including those which couple waiver to 
participation in the Federal intellectual property system and/or full 
participation in specified spending programs of the Federal Government; 
(4) The adequacy of remedies in state courts for private intellectual 
property owners; and (5) The possible effects of the Florida Prepaid 
decisions on the United States' international obligations in the field 
of intellectual property. Some of these sessions may provide an 
opportunity for questions and answers with conference panelists.

    Dated: February 24, 2000.
Q. Todd Dickinson,
Assistant Secretary of Commerce and Commissioner of Patents and 
Trademarks.
[FR Doc. 00-5511 Filed 3-6-00; 8:45 am]
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