In 1990, Congress passed the Copyright Remedy Clarification Act (“CRCA”), and in 1992 passed the Trademark Remedy Clarification Act (“TRCA”) and the Patent and Plant Variety Protection Remedy Clarification Act (“PCA”), all of which provided that states, state instrumentalities, and state employees acting in their official capacity, are not immune under the Eleventh Amendment, or other doctrine of sovereign immunity, from suit in federal court for copyright, trademark, and patent infringement.  In 1997, the Supreme Court held that Congress’ legislative power did not constitutionally authorize it to abrogate state sovereign immunity for patent infringement under the PCA.  Consistently since 1997, inferior federal courts have uniformly construed the Supreme Court’s 1997 opinion to apply to suits against states for copyright and trademark infringement.  Under these rulings, state universities may sue private universities for infringement, but private universities may not sue state universities for the same misconduct, an arguably anomalous result.

On Monday, June 3, the Supreme Court agreed to specifically consider, during its current term, whether Congress is constitutionally empowered to abrogate state sovereign immunity for copyright infringement.  If the Supreme Court so rules, the question then becomes whether the Supreme Court’s opinion could be extrapolated to apply to suits for trademark and possibly patent infringement, and, if not, whether Congress could pass future constitutionally valid legislation to such an effect.  The questions are weighty and the results significant for intellectual property owners having claims against the states for infringement of their intellectual property rights.  Stay tuned, for the playing field may soon be leveled for public and private intellectual property owners.

For more information on this topic, contact your Intellectual Property counsel at Smith, Gambrell & Russell, LLP.