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, 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, 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.