I 

108TH CONGRESS 

1ST SESSION H. R. 2344

To restore Federal remedies for infringements of intellectual property by 

States, and for other purposes. 

IN THE HOUSE OF REPRESENTATIVES 

JUNE 5, 2003

Mr. SMITH of Texas (for himself and Mr. BERMAN) introduced the following 

bill; which was referred to the Committee on the Judiciary 

A BILL

To restore Federal remedies for infringements of intellectual 

property by States, and for other purposes.

1 Be it enacted by the Senate and House of Representa2 tives of the United States of America in Congress assembled,

3 SECTION 1. SHORT TITLE; REFERENCES. 

4 (a) SHORT TITLE.—This Act may be cited as the 

5 ‘‘Intellectual Property Protection Restoration Act of 

6 2003’’. 

7 (b) REFERENCES.—Any reference in this Act to the 

8 Trademark Act of 1946 shall be a reference to the Act 

9 entitled ‘‘An Act to provide for the registration and protec10 tion of trademarks used in commerce, to carry out the pro-
2

•HR 2344 IH 

1 visions of certain international conventions, and for other 

2 purposes’’, approved July 5, 1946 (15 U.S.C. 1051 et 

3 seq.). 

4 SEC. 2. PURPOSES. 

5 The purposes of this Act are to—

6 (1) help eliminate the unfair commercial advan7 tage that States and their instrumentalities now 

8 hold in the Federal intellectual property system be9 cause of their ability to obtain protection under the 

10 United States patent, copyright, and trademark laws 

11 while remaining exempt from liability for infringing 

12 the rights of others; 

13 (2) promote technological innovation and artis14 tic creation in furtherance of the policies underlying 

15 Federal laws and international treaties relating to 

16 intellectual property; 

17 (3) reaffirm the availability of prospective relief 

18 against State officials who are violating or who 

19 threaten to violate Federal intellectual property 

20 laws; and 

21 (4) abrogate State sovereign immunity in cases 

22 where States or their instrumentalities, officers, or 

23 employees violate the United States Constitution by 

24 infringing Federal intellectual property. 
3

•HR 2344 IH 

1 SEC. 3. INTELLECTUAL PROPERTY REMEDIES EQUALI2 ZATION. 

3 (a) AMENDMENT TO PATENT LAW.—Section 287 of 

4 title 35, United States Code, is amended by adding at the 

5 end the following: 

6 ‘‘(d)(1) No remedies under section 284 or 289 shall 

7 be awarded in any civil action brought under this title for 

8 infringement of a patent issued on or after January 1, 

9 2004, if a State or State instrumentality is or was at any 

10 time the legal or beneficial owner of such patent, except 

11 upon proof that—

12 ‘‘(A) on or before the date the infringement 

13 commenced or January 1, 2006, whichever is later, 

14 the State has waived its immunity, under the elev15 enth amendment of the United States Constitution 

16 and under any other doctrine of sovereign immunity, 

17 from suit in Federal court brought against the State 

18 or any of its instrumentalities, for any infringement 

19 of intellectual property protected under Federal law; 

20 and 

21 ‘‘(B) such waiver was made in accordance with 

22 the constitution and laws of the State, and remains 

23 effective. 

24 ‘‘(2) The limitation on remedies under paragraph (1) 

25 shall not apply with respect to a patent if—
4

•HR 2344 IH 

1 ‘‘(A) the limitation would materially and ad2 versely affect a legitimate contract-based expectation 

3 in existence before January 1, 2004; or 

4 ‘‘(B) the party seeking remedies was a bona 

5 fide purchaser for value of the patent, and, at the 

6 time of the purchase, did not know and was reason7 ably without cause to believe that a State or State 

8 instrumentality was once the legal or beneficial 

9 owner of the patent. 

10 ‘‘(3) The limitation on remedies under paragraph (1) 

11 may be raised at any point in a proceeding, through the 

12 conclusion of the action. If raised before January 1, 2006, 

13 the court may stay the proceeding for a reasonable time, 

14 but not later than January 1, 2006, to afford the State 

15 an opportunity to waive its immunity as provided in para16 graph (1).’’. 

17 (b) AMENDMENT TO COPYRIGHT LAW.—Section 504 

18 of title 17, United States Code, is amended by adding at 

19 the end the following: 

20 ‘‘(e) LIMITATION ON REMEDIES IN CERTAIN

21 CASES.—

22 ‘‘(1) No remedies under this section shall be 

23 awarded in any civil action brought under this title 

24 for infringement of an exclusive right in a work cre25 ated on or after January 1, 2004, if a State or State 
5

•HR 2344 IH 

1 instrumentality is or was at any time the legal or 

2 beneficial owner of such right, except upon proof 

3 that—

4 ‘‘(A) on or before the date the infringe5 ment commenced or January 1, 2006, which6 ever is later, the State has waived its immunity, 

7 under the eleventh amendment of the United 

8 States Constitution and under any other doc9 trine of sovereign immunity, from suit in Fed10 eral court brought against the State or any of 

11 its instrumentalities, for any infringement of in12 tellectual property protected under Federal law; 

13 and 

14 ‘‘(B) such waiver was made in accordance 

15 with the constitution and laws of the State, and 

16 remains effective. 

17 ‘‘(2) The limitation on remedies under para18 graph (1) shall not apply with respect to an exclu19 sive right if—

20 ‘‘(A) the limitation would materially and 

21 adversely affect a legitimate contract-based ex22 pectation in existence before January 1, 2004; 

23 or 

24 ‘‘(B) the party seeking remedies was a 

25 bona fide purchaser for value of the exclusive 
6

•HR 2344 IH 

1 right, and, at the time of the purchase, did not 

2 know and was reasonably without cause to be3 lieve that a State or State instrumentality was 

4 once the legal or beneficial owner of the right. 

5 ‘‘(3) The limitation on remedies under para6 graph (1) may be raised at any point in a pro7 ceeding, through the conclusion of the action. If 

8 raised before January 1, 2006, the court may stay 

9 the proceeding for a reasonable time, but not later 

10 than January 1, 2006, to afford the State an oppor11 tunity to waive its immunity as provided in para12 graph (1).’’. 

13 (c) AMENDMENT TO TRADEMARK LAW.—Section 35 

14 of the Trademark Act of 1946 (15 U.S.C. 1117) is amend15 ed by adding at the end the following: 

16 ‘‘(e) LIMITATION ON REMEDIES IN CERTAIN

17 CASES.—

18 ‘‘(1) No remedies under this section shall be 

19 awarded in any civil action arising under this Act 

20 for a violation of any right of the registrant of a 

21 mark registered in the Patent and Trademark Office 

22 on or after January 1, 2004, or any right of the 

23 owner of a mark first used in commerce on or after 

24 January 1, 2004, if a State or State instrumentality 
7

•HR 2344 IH 

1 is or was at any time the legal or beneficial owner 

2 of such right, except upon proof that—

3 ‘‘(A) on or before the date the violation 

4 commenced or January 1, 2006, whichever is 

5 later, the State has waived its immunity, under 

6 the eleventh amendment of the United States 

7 Constitution and under any other doctrine of 

8 sovereign immunity, from suit in Federal court 

9 brought against the State or any of its instru10 mentalities, for any infringement of intellectual 

11 property protected under Federal law; and 

12 ‘‘(B) such waiver was made in accordance 

13 with the constitution and laws of the State, and 

14 remains effective. 

15 ‘‘(2) The limitation on remedies under para16 graph (1) shall not apply with respect to a right of 

17 the registrant or owner of a mark if—

18 ‘‘(A) the limitation would materially and 

19 adversely affect a legitimate contract-based ex20 pectation in existence before January 1, 2004; 

21 or 

22 ‘‘(B) the party seeking remedies was a 

23 bona fide purchaser for value of the right, and, 

24 at the time of the purchase, did not know and 

25 was reasonably without cause to believe that a 
8

•HR 2344 IH 

1 State or State instrumentality was once the 

2 legal or beneficial owner of the right. 

3 ‘‘(3) The limitation on remedies under para4 graph (1) may be raised at any point in a pro5 ceeding, through the conclusion of the action. If 

6 raised before January 1, 2006, the court may stay 

7 the proceeding for a reasonable time, but not later 

8 than January 1, 2006, to afford the State an oppor9 tunity to waive its immunity as provided in para10 graph (1).’’. 

11 (d) TECHNICAL AND CONFORMING AMENDMENTS.—

12 (1) AMENDMENTS TO PATENT LAW.—Section 

13 296 of title 35, United States Code, and the item re14 lating to section 296 in the table of sections for 

15 chapter 29 of such title, are repealed. 

16 (2) AMENDMENTS TO COPYRIGHT LAW.—Sec17 tion 511 of title 17, United States Code, and the 

18 item relating to section 511 in the table of sections 

19 for chapter 5 of such title, are repealed. 

20 (3) AMENDMENTS TO TRADEMARK LAW.—Sec21 tion 40 of the Trademark Act of 1946 (15 U.S.C. 

22 1122) is amended—

23 (A) by striking subsection (b); 

24 (B) in subsection (c), by striking ‘‘or (b)’’ 

25 after ‘‘subsection (a)’’; and 
9

•HR 2344 IH 

1 (C) by redesignating subsection (c) as sub2 section (b). 

3 SEC. 4. CLARIFICATION OF REMEDIES AVAILABLE FOR 

4 STATUTORY VIOLATIONS BY STATE OFFICERS 

5 AND EMPLOYEES. 

6 In any action against an officer or employee of a 

7 State or State instrumentality for any violation of any of 

8 the provisions of title 17 or 35, United States Code, the 

9 Trademark Act of 1946, or the Plant Variety Protection 

10 Act (7 U.S.C. 2321 et seq.), remedies shall be available 

11 against the officer or employee in the same manner and 

12 to the same extent as such remedies are available in an 

13 action against a private individual under like cir14 cumstances. Such remedies may include monetary dam15 ages assessed against the officer or employee, declaratory 

16 and injunctive relief, costs, attorney fees, and destruction 

17 of infringing articles, as provided under the applicable 

18 Federal statute. 

19 SEC. 5. LIABILITY OF STATES FOR CONSTITUTIONAL VIO20 LATIONS INVOLVING INTELLECTUAL PROP21 ERTY. 

22 (a) DUE PROCESS VIOLATIONS.—Any State or State 

23 instrumentality that violates any of the exclusive rights of 

24 a patent owner under title 35, United States Code, of a 

25 copyright owner, author, or owner of a mask work or origi-
10

•HR 2344 IH 

1 nal design under title 17, United States Code, of an owner 

2 or registrant of a mark used in commerce or registered 

3 in the Patent and Trademark Office under the Trademark 

4 Act of 1946, or of an owner of a protected plant variety 

5 under the Plant Variety Protection Act (7 U.S.C. 2321 

6 et seq.), in a manner that deprives any person of property 

7 in violation of the fourteenth amendment of the United 

8 States Constitution, shall be liable to the party injured 

9 in a civil action in Federal court for compensation for the 

10 harm caused by such violation. 

11 (b) TAKINGS VIOLATIONS.—

12 (1) IN GENERAL.—Any State or State instru13 mentality that violates any of the exclusive rights of 

14 a patent owner under title 35, United States Code, 

15 of a copyright owner, author, or owner of a mask 

16 work or original design under title 17, United States 

17 Code, of an owner or registrant of a mark used in 

18 commerce or registered in the Patent and Trade19 mark Office under the Trademark Act of 1946, or 

20 of an owner of a protected plant variety under the 

21 Plant Variety Protection Act (7 U.S.C. 2321 et 

22 seq.), in a manner that takes property in violation 

23 of the fifth and fourteenth amendments of the 

24 United States Constitution, shall be liable to the 
11

•HR 2344 IH 

1 party injured in a civil action in Federal court for 

2 compensation for the harm caused by such violation. 

3 (2) EFFECT ON OTHER RELIEF.—Nothing in 

4 this subsection shall prevent or affect the ability of 

5 a party to obtain declaratory or injunctive relief 

6 under section 4 of this Act or otherwise. 

7 (c) COMPENSATION.—Compensation under sub8 section (a) or (b)—

9 (1) may include actual damages, profits, statu10 tory damages, interest, costs, expert witness fees, 

11 and attorney fees, as set forth in the appropriate 

12 provisions of title 17 or 35, United States Code, the 

13 Trademark Act of 1946, and the Plant Variety Pro14 tection Act; and 

15 (2) may not include an award of treble or en16 hanced damages under section 284 of title 35, 

17 United States Code, section 504(d) of title 17, 

18 United States Code, section 35(b) of the Trademark 

19 Act of 1946 (15 U.S.C. 1117 (b)), or section 124(b) 

20 of the Plant Variety Protection Act (7 U.S.C. 

21 2564(b)). 

22 (d) BURDEN OF PROOF.—In any action under sub23 section (a) or (b)—

24 (1) with respect to any matter that would have 

25 to be proved if the action were an action for in-
12

•HR 2344 IH 

1 fringement brought under the applicable Federal 

2 statute, the burden of proof shall be the same as if 

3 the action were brought under such statute; and 

4 (2) with respect to all other matters, including 

5 whether the State provides an adequate remedy for 

6 any deprivation of property proved by the injured 

7 party under subsection (a), the burden of proof shall 

8 be upon the State or State instrumentality. 

9 (e) EFFECTIVE DATE.—This section shall apply to 

10 violations that occur on or after the date of enactment 

11 of this Act. 

12 SEC. 6. RULES OF CONSTRUCTION. 

13 (a) JURISDICTION.—The district courts shall have 

14 original jurisdiction of any action arising under this Act 

15 under section 1338 of title 28, United States Code. 

16 (b) BROAD CONSTRUCTION.—This Act shall be con17 strued in favor of a broad protection of intellectual prop18 erty, to the maximum extent permitted by the United 

19 States Constitution. 

20 (c) SEVERABILITY.—If any provision of this Act or 

21 any application of such provision to any person or cir22 cumstance is held to be unconstitutional, the remainder 

23 of this Act and the application of the provision to any 

24 other person or circumstance shall not be affected.

Æ