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. 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 firstname.lastname@example.org, by facsimiletransmission 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@example.com, 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 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 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.