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[Congressional Bills 106th Congress]
[From the U.S. Government Publishing Office]
[S. 1835 Introduced in Senate (IS)]

106th CONGRESS
  1st Session
                                S. 1835

  To restore Federal remedies for violations of intellectual property 
               rights by States, and for other purposes.

_______________________________________________________________________

                   IN THE SENATE OF THE UNITED STATES

                            October 29, 1999

   Mr. Leahy introduced the following bill; which was read twice and 
               referred to the Committee on the Judiciary

_______________________________________________________________________

                                 A BILL

 
  To restore Federal remedies for violations of intellectual property 
               rights by States, and for other purposes.

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

SECTION 1. SHORT TITLE; REFERENCES; TABLE OF CONTENTS.

    (a) Short Title.--This Act may be cited as the ``Intellectual 
Property Protection Restoration Act of 1999''.
    (b) References.--Any reference in this Act to the Trademark Act of 
1946 shall be a reference to the Act entitled ``An Act to provide for 
the registration and protection of trade-marks used in commerce, to 
carry out the provisions of certain international conventions, and for 
other purposes'', approved July 5, 1946 (15 U.S.C. 1051 et seq.).
    (c) Table of Contents.--The table of contents for this Act is as 
follows:

Sec. 1. Short title; references; table of contents.
Sec. 2. Findings and purposes.
   TITLE I--STATE PARTICIPATION IN THE FEDERAL INTELLECTUAL PROPERTY 
                                 SYSTEM

                        Subtitle A--Definitions

Sec. 101. Definitions.
     Subtitle B--Procedures for State Participation in the Federal 
                      Intellectual Property System

Sec. 111. Opt-in procedure.
Sec. 112. Breach of assurance by a State.
Sec. 113. Consequences of breach of assurance by a State.
Subtitle C--Administration of Procedures for State Participation in the 
                  Federal Intellectual Property System

Sec. 121. Notification by court of State assertion of sovereign 
                            immunity.
Sec. 122. Confirmation by Commissioner of Patents and Trademarks of 
                            State assertion of sovereign immunity.
Sec. 123. Publication by Commissioner of Patents and Trademarks of 
                            State assertion of sovereign immunity.
Sec. 124. Rulemaking authority.
    Subtitle D--Amendments to the Federal Intellectual Property Laws

Sec. 131. Conditions for State participation in the Federal patent 
                            system.
Sec. 132. Conditions for State participation in the Federal plant 
                            variety protection system.
Sec. 133. Conditions for State participation in the Federal copyright 
                            system.
Sec. 134. Conditions for State participation in the Federal mask work 
                            system.
Sec. 135. Conditions for State participation in the Federal original 
                            design system.
Sec. 136. Conditions for State participation in the Federal trademark 
                            system.
Sec. 137. No retroactive effect.
 TITLE II--RESTORATION OF PROTECTION FOR FEDERAL INTELLECTUAL PROPERTY 
                                 RIGHTS

Sec. 201. Liability of States for patent violations.
Sec. 202. Liability of States for violation of plant variety 
                            protection.
Sec. 203. Liability of States for copyright violations.
Sec. 204. Liability of States for mask work violations.
Sec. 205. Liability of States for original design violations.
Sec. 206. Liability of States for trademark violations.
Sec. 207. Rules of construction.
                       TITLE III--EFFECTIVE DATES

Sec. 301. Effective dates.
Sec. 302. Severability.

SEC. 2. FINDINGS AND PURPOSES.

    (a) Findings.--Congress makes the following findings:
            (1) The protection of Federal intellectual property rights 
        is of critical importance to the Nation's ability to compete in 
        the global market.
            (2) There is a strong Federal interest in the development 
        of uniform and consistent law regarding Federal intellectual 
        property rights, and in the fulfillment of international treaty 
        obligations that the Federal Government has undertaken.
            (3) Prior to 1985 and the Supreme Court ruling in 
        Atascadero State Hospital v. Scanlon, 473 U.S. 234 (1985) (in 
        this section referred to as ``Atascadero''), owners of Federal 
        intellectual property rights could fully protect their rights 
        against infringement by States.
            (4) Following Atascadero, a number of courts held that 
        Federal patent, copyright and trademark laws failed to contain 
        the clear statement of intent to abrogate State sovereign 
        immunity necessary to permit owners of Federal intellectual 
        property rights to protect their rights against infringement by 
        States.
            (5) In 1990, Congress passed the Copyright Remedy 
        Clarification Act (Public Law 101-553), to clarify its intent 
        to abrogate State sovereign immunity from suits for 
        infringement of copyrights and exclusive rights in mask works.
            (6) In 1992, Congress passed the Patent and Plant Variety 
        Protection Remedy Clarification Act (Public Law 102-206) and 
        the Trademark Remedy Clarification Act (Public Law 102-542) to 
        clarify its intent to abrogate State sovereign immunity from 
        suits for infringement of patents, protected plant varieties 
        and trademarks.
            (7) In 1996, the Supreme Court held in Seminole Tribe of 
        Florida v. Florida, 517 U.S. 44 (1996) (in this section 
        referred to as ``Seminole Tribe'') that Congress may not 
        abrogate State sovereign immunity under article I of the United 
        States Constitution. Under the Supreme Court decision in 
        Seminole Tribe, the Copyright Remedy Clarification Act, the 
        Patent and Plant Variety Protection Remedy Clarification Act, 
        and the Trademark Remedy Clarification Act could not be 
        sustained under clause 3 or 8 of section 8 of article I of the 
United States Constitution.
            (8) In 1999, the Supreme Court held in Florida Prepaid 
        Postsecondary Education Expense Board v. College Savings Bank, 
        119 S. Ct. 2199 (1999) (in this section referred to as 
        ``Florida Prepaid'') that the Patent and Plant Variety 
        Protection Remedy Clarification Act could not be sustained as 
        legislation enacted to enforce the guarantees of the due 
        process clause of the fourteenth amendment of the United States 
        Constitution.
            (9) As a result of the Supreme Court's decision in Florida 
        Prepaid, and absent remedial legislation, a patent owner's only 
        remedy under the Federal patent laws against a State infringer 
        of a patent is prospective relief under the doctrine of Ex 
        parte Young, 209 U.S. 123 (1908).
            (10) On the same day that it decided Florida Prepaid, the 
        Supreme Court in College Savings Bank v. Florida Prepaid 
        Postsecondary Education Expense Board, 119 S. Ct. 2219 (1999) 
        (in this section referred to as ``College Savings Bank'') 
        extended State sovereign immunity to purely commercial 
        activities of certain State entities.
            (11) The Seminole Tribe, Florida Prepaid and College 
        Savings Bank decisions have the potential to--
                    (A) deprive private intellectual property owners of 
                effective protection for both their Federal 
                intellectual property rights and their constitutional 
                rights under the fifth and fourteenth amendments of the 
                United States Constitution; and
                    (B) compromise the ability of the United States to 
                fulfill its obligations under a variety of 
                international treaties.
            (12) Article I of the United States Constitution empowers, 
        but does not require, Congress to offer Federal intellectual 
        property protection to any person on such terms as appear 
        reasonable and appropriate to serve the public interest by 
        encouraging scientific and artistic innovation and promoting 
        commerce and fair competition.
            (13) Congress can best accomplish the public interests 
        described under paragraph (12) by providing clear and certain 
        national rules protecting Federal intellectual property rights 
        that establish a level playing field for everyone, including 
        States.
            (14) In recent years, States have increasingly elected to 
        avail themselves of the benefits of the Federal intellectual 
        property system by obtaining and enforcing Federal intellectual 
        property rights.
            (15) Any State should continue to enjoy the benefits of the 
        Federal intellectual property system, if that State accepts the 
        burdens with the benefits.
            (16) A State should not enjoy the benefits of the Federal 
        intellectual property laws unless it is prepared to have those 
        same laws enforced against that State.
            (17) Limiting the ability of a State to enjoy the benefits 
        of the Federal intellectual property system will neither 
        prevent the State from providing any services to citizens of 
        that State, nor stop the State from engaging in any commercial 
        activity.
            (18) If a State waives its sovereign immunity from suit 
        under the Federal intellectual property laws, any 
        constitutional violation resulting from its infringement of a 
        Federal intellectual property right may be remedied in an 
        infringement suit in Federal court.
            (19) If a State does not waive sovereign immunity with 
        respect to Federal intellectual property laws, it is necessary 
        and appropriate for Congress to exercise its power under 
        section 5 of the fourteenth amendment to the United States 
        Constitution to protect the constitutional rights of owners of 
        Federal intellectual property rights, which are property 
        interests protected by the fifth and fourteenth amendments of 
        the United States Constitution.
            (20) According to the Supreme Court in College Savings 
        Bank, ``The hallmark of a protected property interest is the 
        right to exclude others.''. Patents, copyrights, and trademarks 
        are constitutionally cognizable species of property because 
        they secure for their owners rights of exclusion against 
        others.
            (21) A State may not exercise any of the rights conferred 
        by a Federal intellectual property law without the 
        authorization of the right holder, except in the manner and to 
        the extent authorized by such law. In Goldstein v. California, 
        412 U.S. 546 (1973), the Supreme Court stated ``When Congress 
        grants an exclusive right or monopoly, its effects are 
        pervasive; no citizen or State may escape its reach.''.
            (22) Because a State engaged in an infringing use of a 
        Federal intellectual property right is acting outside the scope 
        of its sovereign power, such State fails to meet the public use 
        requirement for a taking of property imposed by the fifth 
        amendment of the United States Constitution (made applicable to 
        the States through the fourteenth amendment).
            (23) According to the Supreme Court in Hawaii Housing 
        Authority v. Midkiff, 467 U.S. 229 (1984), a claim for the 
        taking of property in violation of the public use requirement 
        is ripe at the time of the taking.
            (24) A violation of the Federal intellectual property laws 
        by a State may also constitute an unconstitutional deprivation 
        of property under the due process clause of the fourteenth 
        amendment of the United States Constitution.
            (25) In order to enforce Federal intellectual property 
        rights against States under the fifth and fourteenth amendments 
        of the United States Constitution, it is appropriate to provide 
        a right to enjoin any continuing or future constitutional 
        violation and a right to recover sufficient damages to make the 
        injured party whole.
            (26) Violations of the Federal intellectual property laws 
        by States not only impair the constitutional rights of the 
        individual intellectual property owner, but also discourage 
        technological innovation and artistic creation. Moreover, the 
        potential for future violations to go unremedied as a result of 
        State sovereign immunity prevents intellectual property owners 
from securing fair and efficient fees in licensing negotiations.
            (27) States and instrumentalities of States have been 
        involved in many intellectual property cases. Some States have 
        violated Federal intellectual property rights and the 
        constitutional provisions which protect such rights and have 
        refused to waive their constitutional immunities, thereby 
        securing unfair economic advantages over other States and 
        private entities with whom such States may be in competition.
            (28) States and instrumentalities of States have become 
        increasingly involved in commerce involving intellectual 
        property rights in recent years, and this trend is likely to 
        continue. As a result, violations of Federal intellectual 
        property rights by States have become increasingly more 
        widespread.
            (29) It is not practical for Congress to engage in an 
        ongoing particularized inquiry as to which States are violating 
        the United States Constitution at any given time. Accordingly, 
        a national, uniform remedy for constitutional violations is 
        appropriate.
    (b) Purposes.--The purposes of this Act are to--
            (1) provide States an opportunity to participate in the 
        Federal intellectual property system on equal terms with 
        private entities;
            (2) reaffirm the availability of prospective relief to 
        prevent State officials from violating Federal intellectual 
        property laws, and to allow challenges to assertions by State 
        officials of rights secured under such laws, on the same terms 
        and in the same manner as if such State officials were private 
        parties;
            (3) provide other Federal remedies to owners of Federal 
        intellectual property rights as against the States, State 
        instrumentalities and State officials, to the maximum extent 
        permitted by the United States Constitution; and
            (4) abrogate State sovereign immunity in suits alleging 
        violations of Federal intellectual property laws or challenging 
        assertions of Federal intellectual property rights by States to 
        the maximum extent permitted by the United States Constitution, 
        pursuant to Congress's powers under the fifth and fourteenth 
        amendments of the United States Constitution and any other 
        applicable provisions.

   TITLE I--STATE PARTICIPATION IN THE FEDERAL INTELLECTUAL PROPERTY 
                                 SYSTEM

                        Subtitle A--Definitions

 SEC. 101. DEFINITIONS.

    In this title:
            (1) Federal intellectual property law.--The term ``Federal 
        intellectual property law'' means a statute or regulation of 
        the United States that governs the creation or protection of 
        any form of intellectual property, including a patent, 
        protected plant variety, copyright, mask work, original design, 
        trademark, or service mark.
            (2) Federal intellectual property right.--The term 
        ``Federal intellectual property right'' means any of the rights 
        secured under a Federal intellectual property law.
            (3) Federal intellectual property system.--The term 
        ``Federal intellectual property system'' means the system 
        established under the Federal intellectual property laws for 
        protecting and enforcing Federal intellectual property rights, 
        including through the award of damages, injunctions, and 
        declaratory relief.

     Subtitle B--Procedures for State Participation in the Federal 
                      Intellectual Property System

 SEC. 111. OPT-IN PROCEDURE.

    (a) In General.--No State or any instrumentality of that State may 
acquire a Federal intellectual property right unless the State opts 
into the Federal intellectual property system.
    (b) Agreement To Waive Sovereign Immunity.--A State opts into the 
Federal intellectual property system by providing an assurance under 
the procedures established in subtitle D of this title with respect to 
the State's agreement to waive sovereign immunity from suit in Federal 
court in any action against the State or any instrumentality or 
official of that State--
            (1) arising under a Federal intellectual property law; or
            (2) seeking a declaration with respect to a Federal 
        intellectual property right.

 SEC. 112. BREACH OF ASSURANCE BY A STATE.

    (a) In General.--If a State asserts sovereign immunity contrary to 
an assurance provided under the procedures established in subtitle D of 
this title, such State shall be deemed to have breached such assurance.
    (b) Assertion of Immunity.--A State asserts sovereign immunity for 
purposes of subsection (a) if--
            (1) the State or any instrumentality or official of that 
        State is found to have asserted the State's sovereign immunity 
        in an action against the State or any instrumentality or 
        official of that State--
                    (A) arising under a Federal intellectual property 
                law; or
                    (B) seeking a declaration with respect to a Federal 
                intellectual property right; and
            (2) such State, instrumentality, or official does not, 
        within a period of 60 days after such finding, withdraw such 
        assertion of immunity and consent to the continuation or 
        refiling of the action in which the finding was made.
    (c) Effective Date of Breach of Assurance.--A State shall be deemed 
to have breached an assurance on the day after the end of the 60-day 
period provided in subsection (b)(2).

 SEC. 113. CONSEQUENCES OF BREACH OF ASSURANCE BY A STATE.

    (a) Abandonment of Pending Applications.--Any application by or on 
behalf of a State or any instrumentality or official of that State for 
protection arising under a Federal intellectual property law shall be 
regarded as abandoned and shall not be subject to revival after the 
date referred to under paragraph (2), if that application--
            (1) contains an assurance provided under the procedures 
        established in subtitle D; and
            (2) is pending on the date upon which such State is deemed 
        to have breached an assurance under section 112.
    (b) Establishment of Defense to Liability.--
            (1) In general.--No damages or other monetary relief shall 
        be awarded in any action to enforce a Federal intellectual 
        property right that is or has been owned by or on behalf of a 
        State or any instrumentality of that State at any time during 
        the 5-year period preceding the date upon which such State is 
        deemed to have breached an assurance under section 122.
            (2) No retroactive effect.--The defense under paragraph (1) 
        shall not be available in any action to enforce a Federal 
        intellectual property right that was owned by or on behalf of a 
        State or an instrumentality of a State before the effective 
        date of this title.
    (c) One-Year Bar on Acquisition of New Rights.--
            (1) In general.--A State may not opt back into the Federal 
        intellectual property system under section 111 during the 1-
        year period following the date upon which that State was deemed 
        to have breached an assurance under section 112.
            (2) New rights unencumbered.--Federal intellectual property 
        rights acquired by or on behalf of a State or any 
        instrumentality or official of that State after the State has 
        opted back into the Federal intellectual property system shall 
        be unencumbered by any prior breach of an assurance.

Subtitle C--Administration of Procedures for State Participation in the 
                  Federal Intellectual Property System

 SEC. 121. NOTIFICATION BY COURT OF STATE ASSERTION OF SOVEREIGN 
              IMMUNITY.

    Not later than 20 days after any finding by a Federal court that a 
State or any instrumentality or official of that State has asserted the 
State's sovereign immunity from suit in that court in an action against 
the State or any instrumentality or official of that State arising 
under a Federal intellectual property law, or seeking a declaration 
with respect to a Federal intellectual property right, the clerk of the 
court shall notify the Commissioner of Patents and Trademarks. The 
clerk shall send with the notification a copy of any order, judgment, 
or written opinion of the court.

 SEC. 122. CONFIRMATION BY COMMISSIONER OF PATENTS AND TRADEMARKS OF 
              STATE ASSERTION OF SOVEREIGN IMMUNITY.

    Not later than 20 days after receiving a notification under section 
121, the Commissioner of Patents and Trademarks shall--
            (1) forward such notification to the attorney general of 
        the State whose sovereign immunity has been found to have been 
        asserted, together with a copy of this title; and
            (2) inquire of the attorney general whether the State 
        intends to withdraw such assertion of immunity and consent to 
        the continuation or refiling of the action in which the finding 
        was made within the 60-day period provided in section 
        112(b)(2).

 SEC. 123. PUBLICATION BY COMMISSIONER OF PATENTS AND TRADEMARKS OF 
              STATE ASSERTION OF SOVEREIGN IMMUNITY.

    (a) In General.--The Commissioner of Patents and Trademarks, in 
consultation with the Secretary of Agriculture and the Register of 
Copyrights, shall publish in the Federal Register and maintain on the 
Internet information concerning the participation of each State in the 
Federal intellectual property system.
    (b) Content of Information.--The information under subsection (a) 
shall include, for each State--
            (1) whether the State's sovereign immunity from suit in 
        Federal court has been asserted under section 112(b); and
            (2) the name of the case and court in which such assertion 
        of immunity was made.

SEC. 124. RULEMAKING AUTHORITY.

    The Commissioner of Patents and Trademarks may, pursuant to section 
6 of title 35, United States Code, promulgate such rules as necessary 
to implement the provisions of this subtitle.

    Subtitle D--Amendments to the Federal Intellectual Property Laws

 SEC. 131. CONDITIONS FOR STATE PARTICIPATION IN THE FEDERAL PATENT 
              SYSTEM.

    (a) Application for Patent.--Section 111 of title 35, United States 
Code, is amended by adding at the end the following:
    ``(c) Application by or on Behalf of a State.--When an application 
for patent or a provisional application for patent is made by or on 
behalf of a State, an instrumentality of a State, or a State official 
acting in an official capacity, the Commissioner shall require--
            ``(1) an assurance that, during the pendency of the 
        application and the term of any patent resulting from that 
        application, the State's sovereign immunity from suit in 
        Federal court will be waived in any action against the State or 
        any instrumentality or official of that State--
                    ``(A) arising under a Federal intellectual property 
                law; or
                    ``(B) seeking a declaration with respect to a 
                Federal intellectual property right; and
            ``(2) a certification that, during the 1-year period 
        preceding the date of the application, the State's sovereign 
        immunity from suit in Federal court has not been asserted in 
        any action described in paragraph (1).''.
    (b) Assignment and Recordation.--Section 261 of title 35, United 
States Code, is amended--
            (1) by striking ``Subject to the provisions of this title'' 
        in the first sentence and inserting ``(a) In General.--Subject 
        to the provisions of this title''; and
            (2) by adding at the end the following:
    ``(b) Recordation by or on Behalf of a State.--When an assignment, 
grant, or conveyance of an application for patent, patent, or any 
interest in that patent, is recorded in the Patent and Trademark Office 
by or on behalf of a State, an instrumentality of a State, or a State 
official acting in an official capacity, the Commissioner shall 
require--
            ``(1) an assurance that, during the pendency of the 
        application and the term of any patent resulting from that 
        application, or during the remaining term of the patent or any 
        interest in that patent, the State's sovereign immunity from 
        suit in Federal court will be waived in any action against the 
        State or any instrumentality or official of that State--
                    ``(A) arising under a Federal intellectual property 
                law; or
                    ``(B) seeking a declaration with respect to a 
                Federal intellectual property right; and
            ``(2) a certification that, during the 1-year period 
        preceding the date of the recordation, the State's sovereign 
        immunity from suit in Federal court has not been asserted in 
        any action described in paragraph (1).''.

 SEC. 132. CONDITIONS FOR STATE PARTICIPATION IN THE FEDERAL PLANT 
              VARIETY PROTECTION SYSTEM.

    (a) Application for Certificate of Protection.--Section 52 of the 
Plant Variety Protection Act (7 U.S.C. 2422) is amended--
            (1) by striking ``An application for a certificate'' in the 
        first sentence and inserting ``(a) An application for a 
        certificate''; and
            (2) by adding at the end the following:
    ``(b) When an application for plant variety protection is made by 
or on behalf of a State, an instrumentality of a State, or a State 
official acting in an official capacity, the Secretary shall require--
            ``(1) an assurance that, during the pendency of the 
        application and the term of any plant variety protection 
        resulting from that application, the State's sovereign immunity 
        from suit in Federal court will be waived in any action against 
        the State or any instrumentality or official of that State--
                    ``(A) arising under a Federal intellectual property 
                law; or
                    ``(B) seeking a declaration with respect to a 
                Federal intellectual property right; and
            ``(2) a certification that, during the 1-year period 
        preceding the date of the application, the State's sovereign 
        immunity from suit in Federal court has not been asserted in 
        any action described in paragraph (1).''.
    (b) Assignment and Recordation.--Section 101 of the Plant Variety 
Protection Act (7 U.S.C. 2531) is amended by adding at the end the 
following:
    ``(e) When an assignment, grant, conveyance, or license of plant 
variety protection or application for plant variety protection is filed 
for recording in the Plant Variety Protection Office by or on behalf of 
a State, an instrumentality of a State, or a State official acting in 
an official capacity, the Secretary shall require--
            ``(1) an assurance that, during the remaining term of the 
        plant variety protection, or during the pendency of the 
        application and the term of any plant variety protection 
        resulting from that application, the State's sovereign immunity 
        from suit in Federal court will be waived in any action against 
        the State or any instrumentality or official of that State--
                    ``(A) arising under a Federal intellectual property 
                law; or
                    ``(B) seeking a declaration with respect to a 
                Federal intellectual property right; and
            ``(2) a certification that, during the 1-year period 
        preceding the date of the recordation, the State's sovereign 
        immunity from suit in Federal court has not been asserted in 
        any action described in paragraph (1).''.

 SEC. 133. CONDITIONS FOR STATE PARTICIPATION IN THE FEDERAL COPYRIGHT 
              SYSTEM.

    Section 409 of title 17, United States Code, is amended--
            (1) in paragraph (10), by striking ``and'' at the end;
            (2) by redesignating paragraph (11) as paragraph (12); and
            (3) by inserting after paragraph (10) the following:
            ``(11) if the application is by or on behalf of a State or 
        an instrumentality of a State--
                    ``(A) an assurance that, during the pendency of the 
                application and the subsistence of any copyright 
                identified in that application, the State's sovereign 
                immunity from suit in Federal court will be waived in 
                any action against the State or any instrumentality or 
                official of that State--
                            ``(i) arising under a Federal intellectual 
                        property law; or
                            ``(ii) seeking a declaration with respect 
                        to a Federal intellectual property right; and
                    ``(B) a certification that, during the 1-year 
                period preceding the date of the application, the 
                State's sovereign immunity from suit in Federal court 
                has not been asserted in any action described in 
                subparagraph (A); and''.

 SEC. 134. CONDITIONS FOR STATE PARTICIPATION IN THE FEDERAL MASK WORK 
              SYSTEM.

    Section 908 of title 17, United States Code, is amended by adding 
at the end the following:
    ``(h) When an application for registration of a mask work is made 
by or on behalf of a State or an instrumentality of a State, the 
Register of Copyrights shall require--
            ``(1) an assurance that, during the pendency of the 
        application and any term of protection resulting from that 
        application, the State's sovereign immunity from suit in 
        Federal court will be waived in any action against the State or 
        any instrumentality or official of that State--
                    ``(A) arising under a Federal intellectual property 
                law; or
                    ``(B) seeking a declaration with respect to a 
                Federal intellectual property right; and
            ``(2) a certification that, during the 1-year period 
        preceding the date of the application, the State's sovereign 
        immunity from suit in Federal court has not been asserted in 
        any action described in paragraph (1).''.

 SEC. 135. CONDITIONS FOR STATE PARTICIPATION IN THE FEDERAL ORIGINAL 
              DESIGN SYSTEM.

    Section 1310 of title 17, United States Code, is amended by adding 
at the end the following:
    ``(k) Application by or on Behalf of a State or an Instrumentality 
of a State.--When an application for registration of a design is made 
by or on behalf of a State or an instrumentality of a State, the 
Administrator shall require--
            ``(1) an assurance that, during the pendency of the 
        application and any term of protection resulting from that 
        application, the State's sovereign immunity from suit in 
        Federal court will be waived in any action against the State or 
        any instrumentality or official of that State--
                    ``(A) arising under a Federal intellectual property 
                law; or
                    ``(B) seeking a declaration with respect to a 
                Federal intellectual property right; and
            ``(2) a certification that, during the 1-year period 
        preceding the date of the application, the State's sovereign 
        immunity from suit in Federal court has not been asserted in 
        any action described in paragraph (1).''.

 SEC. 136. CONDITIONS FOR STATE PARTICIPATION IN THE FEDERAL TRADEMARK 
              SYSTEM.

    (a) Application for Use of Trademark or Service Mark.--Section 1 of 
the Trademark Act of 1946 (15 U.S.C. 1051) is amended by adding at the 
end the following:
    ``(f) When an application under subsection (a) or (b) of this 
section is made by or on behalf of a State or an instrumentality of a 
State, the Commissioner shall require--
            ``(1) an assurance that, during the pendency of the 
        application and for as long as the mark is registered, the 
        State's sovereign immunity from suit in Federal court will be 
        waived in any action against the State or any instrumentality 
        or official of that State--
                    ``(A) arising under a Federal intellectual property 
                law; or
                    ``(B) seeking a declaration with respect to a 
                Federal intellectual property right; and
            ``(2) a certification that, during the 1-year period 
        preceding the date of the application, the State's sovereign 
        immunity from suit in Federal court has not been asserted in 
        any action described in paragraph (1).''.
    (b) Assignment and Recordation.--Section 10 of the Trademark Act of 
1946 (15 U.S.C. 1060) is amended--
            (1) by inserting ``(a)'' before ``A registered mark'';
            (2) by inserting ``(b)'' before ``An assignee not 
        domiciled''; and
            (3) by adding at the end the following:
    ``(c) When an assignment of a registered mark or a mark for which 
an application to register has been filed is recorded in the Patent and 
Trademark Office by or on behalf of a State or an instrumentality of a 
State, the Commissioner shall require--
            ``(1) an assurance that, during the pendency of any 
        application and for as long as any mark is registered, the 
        State's sovereign immunity from suit in Federal court will be 
        waived in any action against the State or any instrumentality 
        or official of that State--
                    ``(A) arising under a Federal intellectual property 
                law; or
                    ``(B) seeking a declaration with respect to a 
                Federal intellectual property right; and
            ``(2) a certification that, during the 1-year period 
        preceding the date of the recordation, the State's sovereign 
        immunity from suit in Federal court has not been asserted in 
        any action described in paragraph (1).''.

 SEC. 137. NO RETROACTIVE EFFECT.

    The amendments made by this subtitle shall not apply to--
            (1) any application pending before the effective date of 
        this title; or
            (2) any assertion of sovereign immunity made before the 
        effective date of this title.

 TITLE II--RESTORATION OF PROTECTION FOR FEDERAL INTELLECTUAL PROPERTY 
                                 RIGHTS

SEC. 201. LIABILITY OF STATES FOR PATENT VIOLATIONS.

    Section 296 of title 35, United States Code, is amended to read as 
follows:
``Sec. 296. Liability of States, instrumentalities of States, and State 
              officials for infringement of patents
    ``(a) Remedy for Statutory Violation.--In any action against an 
officer or employee of a State for infringement of a patent under 
section 271, or for any other violation under this title, prospective 
relief is available against the officer or employee in the same manner 
and to the same extent as such relief is available in an action against 
a private individual under like circumstances. Prospective relief may 
include injunctions under section 283, attorney fees under section 285, 
and declaratory relief under section 2201 of title 28.
    ``(b) Remedy for Constitutional Violation.--
            ``(1) Definition.--In this subsection, the term `State' 
        includes a State, an instrumentality of a State, and an officer 
        or employee of a State acting in an official capacity.
            ``(2) In general.--
                    ``(A) Remedies.--Any State that takes any of the 
                rights of exclusion secured under this chapter in 
                violation of the fifth amendment of the United States 
                Constitution, or deprives any person of any of the 
                rights of exclusion secured under this chapter without 
                due process of law in violation of the fourteenth 
                amendment--
                            ``(i) shall be liable to the party injured 
                        in a civil action against the State for the 
                        recovery of that party's reasonable and entire 
                        compensation; and
                            ``(ii) may be enjoined from continuing or 
                        future constitutional violations, in accordance 
                        with the principles of equity and upon such 
                        terms as the court may determine reasonable.
                    ``(B) Compensation.--Reasonable and entire 
                compensation may include damages, interest, and costs 
                under section 284, attorney fees under section 285, and 
                the additional remedy for infringement of design 
                patents under section 289.
            ``(3) Limitations.--
                    ``(A) In general.--The remedy provided under 
                paragraph (2) is not available in an action against--
                            ``(i) a State that has waived its sovereign 
                        immunity from suit in Federal court for damages 
                        resulting from a violation of this title; or
                            ``(ii) a State official in an individual 
                        capacity.
                    ``(B) Remedies.--Remedies (including remedies both 
                at law and in equity) are available against such State 
                or State official in the same manner and to the same 
                extent as such remedies are available in an action 
                against a private entity or individual under like 
                circumstances.
            ``(4) Burden of proof.--If a claimant produces prima facie 
        evidence to support a claim under paragraph (2), the burden of 
        proof shall be on the State, except as to any elements of the 
        claim that would have to be proved if the action were brought 
        under another provision of this title. The burden of proof 
        shall be unaffected with respect to any such element.
    ``(c)  Preemption.--No State may use or manufacture the invention 
described in or covered by a patent without the authorization or 
consent of the patent owner, except in the manner and to the extent 
authorized by Federal law.''.

SEC. 202. LIABILITY OF STATES FOR VIOLATION OF PLANT VARIETY 
              PROTECTION.

    Section 130 of the Plant Variety Protection Act (7 U.S.C. 2570) is 
amended to read as follows:

``SEC. 130. LIABILITY OF STATES, INSTRUMENTALITIES OF STATES, AND STATE 
              OFFICIALS FOR INFRINGEMENT OF PLANT VARIETY PROTECTION.

    ``(a) In any action against an officer or employee of a State for 
infringement of plant variety protection under section 111, or for any 
other violation under this chapter, prospective relief is available 
against the officer or employee in the same manner and to the same 
extent as such relief is available in an action against a private 
individual under like circumstances. Prospective relief may include 
injunctions under section 123, attorney fees under section 125, and 
declaratory relief under section 2201 of title 28, United States Code.
    ``(b)(1) In this subsection, the term `State' includes a State, an 
instrumentality of a State, and an officer or employee of a State 
acting in an official capacity.
    ``(2)(A) Any State that takes any of the rights of exclusion 
secured under this chapter in violation of the fifth amendment of the 
United States Constitution, or deprives any person of any of the rights 
of exclusion secured under this chapter without due process of law in 
violation of the fourteenth amendment--
            ``(i) shall be liable to the party injured in a civil 
        action against the State for the recovery of that party's 
        reasonable and entire compensation; and
            ``(ii) may be enjoined from continuing or future 
        constitutional violations, in accordance with the principles of 
        equity and upon such terms as the court may determine 
        reasonable.
    ``(B) Reasonable and entire compensation may include damages, 
interest, and costs under section 124, and attorney fees under section 
125.
    ``(3)(A) The remedy provided under paragraph (2) is not available 
in an action against--
            ``(i) a State that has waived its sovereign immunity from 
        suit in Federal court for damages resulting from a violation of 
        this chapter; or
            ``(ii) a State official in an individual capacity.
    ``(B) Remedies (including remedies both at law and in equity) are 
available against such State or State official in the same manner and 
to the same extent as such remedies are available in an action against 
a private entity or individual under like circumstances.
    ``(4) If a claimant produces prima facie evidence to support a 
claim under paragraph (2), the burden of proof shall be on the State, 
except as to any elements of the claim that would have to be proved if 
the action were brought under another provision of this chapter. The 
burden of proof shall be unaffected with respect to any such element.
    ``(c) No State may exercise any rights of the owner of a plant 
variety protected by a certificate of plant variety protection under 
this chapter without the authorization or consent of such owner, except 
in the manner and to the extent authorized by Federal law.''.

SEC. 203. LIABILITY OF STATES FOR COPYRIGHT VIOLATIONS.

    Section 511 of title 17, United States Code, is amended to read as 
follows:
``Sec. 511. Liability of States, instrumentalities of States, and State 
              officials for infringement of copyright
    ``(a) Remedy for Statutory Violation.--In any action against an 
officer or employee of a State for violation of any rights of a 
copyright owner as provided in sections 106 through 121 or of an author 
as provided in section 106A, or for any other violation under this 
title, prospective relief is available against the officer or employee 
in the same manner and to the same extent as such relief is available 
in an action against a private individual under like circumstances. 
Prospective relief may include injunctions under section 502, 
impounding and disposition of infringing articles under section 503, 
costs and attorney fees under section 505, and declaratory relief under 
section 2201 of title 28.
    ``(b) Remedy for Constitutional Violation.--
            ``(1) Definition.--In this subsection, the term `State' 
        includes a State, an instrumentality of a State, and an officer 
        or employee of a State acting in an official capacity.
            ``(2) In general.--
                    ``(A) Remedies.--Any State that takes any of the 
                rights of exclusion secured under this title in 
                violation of the fifth amendment of the United States 
                Constitution, or deprives any person of any of the 
                rights of exclusion secured under this title without 
                due process of law in violation of the fourteenth 
                amendment--
                            ``(i) shall be liable to the party injured 
                        in a civil action against the State for the 
                        recovery of that party's reasonable and entire 
                        compensation; and
                            ``(ii) may be enjoined from continuing or 
                        future constitutional violations, in accordance 
                        with the principles of equity and upon such 
                        terms as the court may determine reasonable.
                    ``(B) Compensation.--Reasonable and entire 
                compensation may include actual damages and profits or 
                statutory damages under section 504, and costs and 
                attorney fees under section 505.
            ``(3) Limitations.--
                    ``(A) In general.--The remedy provided under 
                paragraph (2) is not available in an action against--
                            ``(i) a State that has waived its sovereign 
                        immunity from suit in Federal court for damages 
                        resulting from a violation of this title; or
                            ``(ii) a State official in an individual 
                        capacity.
                    ``(B) Remedies.--Remedies (including remedies both 
                at law and in equity) are available against such State 
                or State official in the same manner and to the same 
                extent as such remedies are available in an action 
                against a private entity or individual under like 
                circumstances.
            ``(4) Burden of proof.--If a claimant produces prima facie 
        evidence to support a claim under paragraph (2), the burden of 
        proof shall be on the State, except as to any elements of the 
        claim that would have to be proved if the action were brought 
        under another provision of this title. The burden of proof 
        shall be unaffected with respect to any such element.
    ``(c) Preemption.--No State may exercise any rights of a copyright 
owner protected under this title without the authorization or consent 
of such owner, except in the manner and to the extent authorized by 
Federal law.''.

SEC. 204. LIABILITY OF STATES FOR MASK WORK VIOLATIONS.

    (a) In General.--Chapter 9 of title 17, United States Code, is 
amended--
            (1) in section 911, by striking subsection (g); and
            (2) by adding at the end the following:
``Sec. 915. Liability of States, instrumentalities of States, and State 
              officials for violation of mask works
    ``(a) Remedy for Statutory Violation.--In any action against an 
officer or employee of a State for infringement of any rights in a mask 
work protected under this chapter, or for any other violation under 
this chapter, prospective relief is available against the officer or 
employee in the same manner and to the same extent as such relief is 
available in an action against a private individual under like 
circumstances. Prospective relief may include injunctive relief under 
section 911(a), impounding and destruction of infringing products under 
section 911(e), costs and attorney fees under section 911(f), and 
declaratory relief under section 2201 of title 28.
    ``(b) Remedy for Constitutional Violation.--
            ``(1) Definition.--In this subsection, the term `State' 
        includes a State, an instrumentality of a State, and an officer 
        or employee of a State acting in an official capacity.
            ``(2) In general.--
                    ``(A) Remedies.--Any State that takes any of the 
                rights of exclusion secured under this chapter in 
                violation of the fifth amendment of the United States 
                Constitution, or deprives any person of any of the 
                rights of exclusion secured under this chapter without 
                due process of law in violation of the fourteenth 
                amendment--
                            ``(i) shall be liable to the party injured 
                        in a civil action against the State for the 
                        recovery of that party's reasonable and entire 
                        compensation; and
                            ``(ii) may be enjoined from continuing or 
                        future constitutional violations, in accordance 
                        with the principles of equity and upon such 
                        terms as the court may determine reasonable.
                    ``(B) Compensation.--Reasonable and entire 
                compensation may include actual damages and profits 
                under section 911(b) or statutory damages under section 
                911(c), and costs and attorney fees under section 
                911(f).
            ``(3) Limitations.--
                    ``(A) In general.--The remedy provided under 
                paragraph (2) is not available in an action against--
                            ``(i) a State that has waived its sovereign 
                        immunity from suit in Federal court for damages 
                        resulting from a violation of this title; or
                            ``(ii) a State official in an individual 
                        capacity.
                    ``(B) Remedies.--Remedies (including remedies both 
                at law and in equity) are available against such State 
                or State official in the same manner and to the same 
                extent as such remedies are available in an action 
                against a private entity or individual under like 
                circumstances.
            ``(4) Burden of proof.--If a claimant produces prima facie 
        evidence to support a claim under paragraph (2), the burden of 
        proof shall be on the State, except as to any elements of the 
        claim that would have to be proved if the action were brought 
        under another provision of this chapter. The burden of proof 
        shall be unaffected with respect to any such element.
    ``(c) Preemption.--No State may exercise any rights of the owner of 
a mask work protected under this chapter without the authorization or 
consent of such owner, except in the manner and to the extent 
authorized by Federal law.''.
    (b) Conforming Amendment.--The table of sections for chapter 9 of 
title 17, United States Code, is amended by adding at the end the 
following:

``915. Liability of States, instrumentalities of States, and State 
                            officials for violation of mask works.''.

 SEC. 205. LIABILITY OF STATES FOR ORIGINAL DESIGN VIOLATIONS.

    (a) In General.--Chapter 13 of title 17, United States Code, is 
amended--
            (1) in section 1309(a), by adding at the end the following: 
        ``In this subsection, the term `any person' includes any State, 
        any instrumentality of a State, and any officer or employee of 
        a State or instrumentality of a State acting in an official 
        capacity. Any State, and any such instrumentality, officer, or 
        employee, shall be subject to the provisions of this chapter in 
        the same manner and to the same extent as any nongovernmental 
        entity.''; and
            (2) by adding at the end the following:
``Sec. 1333. Liability of States, instrumentalities of States, and 
              State officials for violation of original designs
    ``(a) Remedy for Statutory Violation.--In any action against an 
officer or employee of a State for infringement of any rights in a 
design protected under this chapter, or for any other violation under 
this chapter, prospective relief is available against the officer or 
employee in the same manner and to the same extent as such relief is 
available in an action against a private individual under like 
circumstances. Prospective relief may include injunctions under section 
1322, attorney fees under section 1323(d), disposition of infringing 
and other articles under section 1323(e), and declaratory relief under 
section 2201 of title 28.
    ``(b) Remedy for Constitutional Violation.--
            ``(1) Definition.--In this subsection, the term `State' 
        includes a State, an instrumentality of a State, and an officer 
        or employee of a State acting in an official capacity.
            ``(2) In general.--
                    ``(A) Remedies.--Any State that takes any of the 
                rights of exclusion secured under this chapter in 
                violation of the fifth amendment of the United States 
                Constitution, or deprives any person of any of the 
                rights of exclusion secured under this chapter without 
                due process of law in violation of the fourteenth 
                amendment--
                            ``(i) shall be liable to the party injured 
                        in a civil action against the State for the 
                        recovery of that party's reasonable and entire 
                        compensation; and
                            ``(ii) may be enjoined from continuing or 
                        future constitutional violations, in accordance 
                        with the principles of equity and upon such 
                        terms as the court may determine reasonable.
                    ``(B) Compensation.--Reasonable and entire 
                compensation may include damages, profits, and attorney 
                fees under section 1323.
            ``(3) Limitations.--
                    ``(A) In general.--The remedy provided under 
                paragraph (2) is not available in an action against--
                            ``(i) a State that has waived its sovereign 
                        immunity from suit in Federal court for damages 
                        resulting from a violation of this title; or
                            ``(ii) a State official in an individual 
                        capacity.
                    ``(B) Remedies.--Remedies (including remedies both 
                at law and in equity) are available against such State 
                or State official in the same manner and to the same 
                extent as such remedies are available in an action 
                against a private entity or individual under like 
                circumstances.
            ``(4) Burden of proof.--If a claimant produces prima facie 
        evidence to support a claim under paragraph (2), the burden of 
        proof shall be on the State, except as to any elements of the 
        claim that would have to be proved if the action were brought 
        under another provision of this chapter. The burden of proof 
        shall be unaffected with respect to any such element.
    ``(c) Preemption.--No State may exercise any rights of the owner of 
a design protected under this chapter without the authorization or 
consent of such owner, except in the manner and to the extent 
authorized by Federal law.''.
    (b) Conforming Amendment.--The table of sections for chapter 13 of 
title 17, United States Code, is amended by adding at the end the 
following:

``1333. Liability of States, instrumentalities of States, and State 
                            officials for violation of original 
                            designs.''.

SEC. 206. LIABILITY OF STATES FOR TRADEMARK VIOLATIONS.

    Section 40 of the Trademark Act of 1946 (15 U.S.C. 1122) is amended 
to read as follows:

``SEC. 40. LIABILITY OF STATES, INSTRUMENTALITIES OF STATES, AND STATE 
              OFFICIALS FOR INFRINGEMENT OF TRADEMARKS.

    ``(a) Remedy for Statutory Violation.--In any action against an 
officer or employee of a State for infringement of a trademark under 
section 32, or for any other violation under this Act, prospective 
relief is available against the officer or employee in the same manner 
and to the same extent as such relief is available in an action against 
a private individual under like circumstances. Prospective relief may 
include injunctive relief under section 34, costs and attorney fees 
under section 35, destruction of infringing articles under section 36, 
and declaratory relief under section 2201 of title 28, United States 
Code.
    ``(b) Remedy for Constitutional Violation.--
            ``(1) Definition.--In this subsection, the term `State' 
        includes a State, an instrumentality of a State, and an officer 
        or employee of a State acting in an official capacity.
            ``(2) In general.--
                    ``(A) Remedies.--Any State that takes any of the 
                rights of exclusion secured under this Act in violation 
                of the fifth amendment of the United States 
                Constitution, or deprives any person of any of the 
                rights of exclusion secured under this Act without due 
                process of law in violation of the fourteenth 
                amendment--
                            ``(i) shall be liable to the party injured 
                        in a civil action against the State for the 
                        recovery of that party's reasonable and entire 
                        compensation; and
                            ``(ii) may be enjoined from continuing or 
                        future constitutional violations, in accordance 
                        with the principles of equity and upon such 
                        terms as the court may determine reasonable.
                    ``(B) Compensation.--Reasonable and entire 
                compensation may include actual damages and profits or 
                statutory damages, and costs and attorney fees under 
                section 35.
            ``(3) Limitations.--
                    ``(A) In general.--The remedy provided under 
                paragraph (2) is not available in an action against--
                            ``(i) a State that has waived its sovereign 
                        immunity from suit in Federal court for damages 
                        resulting from a violation of this title; or
                            ``(ii) a State official in an individual 
                        capacity.
                    ``(B) Remedies.--Remedies (including remedies both 
                at law and in equity) are available against such State 
                or State official in the same manner and to the same 
                extent as such remedies are available in an action 
                against a private entity or individual under like 
                circumstances.
            ``(4) Burden of proof.--If a claimant produces prima facie 
        evidence to support a claim under paragraph (2), the burden of 
        proof shall be on the State, except as to any elements of the 
        claim that would have to be proved if the action were brought 
        under another provision of this Act. The burden of proof shall 
        be unaffected with respect to any such element.
    ``(c) Preemption.--No State may use a federally registered mark for 
the same or similar goods or service without the authorization or 
consent of the owner of the mark, except in the manner and to the 
extent authorized by Federal law.''.

SEC. 207. RULES OF CONSTRUCTION.

    (a) Jurisdiction.--The district courts shall have original 
jurisdiction of any action arising under this title and the amendments 
made by this title under section 1338 of title 28, United States Code.
    (b) Broad Construction.--This title and the amendments made by this 
title shall be construed in favor of a broad protection of Federal 
intellectual property rights, to the maximum extent permitted by this 
title and the United States Constitution.

                       TITLE III--EFFECTIVE DATES

SEC. 301. EFFECTIVE DATES.

    (a) Title I.--Title I of this Act and the amendments made by that 
title shall take effect 90 days after the date of enactment of this 
Act.
    (b) Title II.--The amendments made by title II of this Act shall 
take effect with respect to violations that occur on or after the date 
of enactment of this Act.

SEC. 302. SEVERABILITY.

    If any provision of this Act or of an amendment made by this Act, 
or any application of such provision to any person or circumstance, is 
held to be unconstitutional, the remainder of this Act, the amendments 
made by this Act, and the application of the provision to any other 
person or circumstance shall not be affected.
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