II

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.

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; TABLE OF CON4 TENTS.

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

6 ‘‘Intellectual Property Protection Restoration Act of

7 1999’’.

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

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

10 entitled ‘‘An Act to provide for the registration and protec-
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1 tion of trade-marks used in commerce, to carry out the

2 provisions of certain international conventions, and for

3 other purposes’’, approved July 5, 1946 (15 U.S.C. 1051

4 et seq.).

5 (c) TABLE OF CONTENTS.—The table of contents for

6 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.
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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.

1 SEC. 2. FINDINGS AND PURPOSES.

2 (a) FINDINGS.—Congress makes the following find3 ings:

4 (1) The protection of Federal intellectual prop5 erty rights is of critical importance to the Nation’s

6 ability to compete in the global market.

7 (2) There is a strong Federal interest in the de8 velopment of uniform and consistent law regarding

9 Federal intellectual property rights, and in the ful10 fillment of international treaty obligations that the

11 Federal Government has undertaken.

12 (3) Prior to 1985 and the Supreme Court rul13 ing in Atascadero State Hospital v. Scanlon, 473

14 U.S. 234 (1985) (in this section referred to as

15 ‘‘Atascadero’’), owners of Federal intellectual prop16 erty rights could fully protect their rights against in17 fringement by States.

18 (4) Following Atascadero, a number of courts

19 held that Federal patent, copyright and trademark

20 laws failed to contain the clear statement of intent

21 to abrogate State sovereign immunity necessary to
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1 permit owners of Federal intellectual property rights

2 to protect their rights against infringement by

3 States.

4 (5) In 1990, Congress passed the Copyright

5 Remedy Clarification Act (Public Law 101–553), to

6 clarify its intent to abrogate State sovereign immu7 nity from suits for infringement of copyrights and

8 exclusive rights in mask works.

9 (6) In 1992, Congress passed the Patent and

10 Plant Variety Protection Remedy Clarification Act

11 (Public Law 102–206) and the Trademark Remedy

12 Clarification Act (Public Law 102–542) to clarify its

13 intent to abrogate State sovereign immunity from

14 suits for infringement of patents, protected plant va15 rieties and trademarks.

16 (7) In 1996, the Supreme Court held in Semi17 nole Tribe of Florida v. Florida, 517 U.S. 44 (1996)

18 (in this section referred to as ‘‘Seminole Tribe’’)

19 that Congress may not abrogate State sovereign im20 munity under article I of the United States Con21 stitution. Under the Supreme Court decision in Sem22 inole Tribe, the Copyright Remedy Clarification Act,

23 the Patent and Plant Variety Protection Remedy

24 Clarification Act, and the Trademark Remedy Clari25 fication Act could not be sustained under clause 3
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1 or 8 of section 8 of article I of the United States

2 Constitution.

3 (8) In 1999, the Supreme Court held in Florida

4 Prepaid Postsecondary Education Expense Board v.

5 College Savings Bank, 119 S. Ct. 2199 (1999) (in

6 this section referred to as ‘‘Florida Prepaid’’) that

7 the Patent and Plant Variety Protection Remedy

8 Clarification Act could not be sustained as legisla9 tion enacted to enforce the guarantees of the due

10 process clause of the fourteenth amendment of the

11 United States Constitution.

12 (9) As a result of the Supreme Court’s decision

13 in Florida Prepaid, and absent remedial legislation,

14 a patent owner’s only remedy under the Federal pat15 ent laws against a State infringer of a patent is pro16 spective relief under the doctrine of Ex parte Young,

17 209 U.S. 123 (1908).

18 (10) On the same day that it decided Florida

19 Prepaid, the Supreme Court in College Savings

20 Bank v. Florida Prepaid Postsecondary Education

21 Expense Board, 119 S. Ct. 2219 (1999) (in this sec22 tion referred to as ‘‘College Savings Bank’’) ex23 tended State sovereign immunity to purely commer24 cial activities of certain State entities.
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1 (11) The Seminole Tribe, Florida Prepaid and

2 College Savings Bank decisions have the potential

3 to—

4 (A) deprive private intellectual property

5 owners of effective protection for both their

6 Federal intellectual property rights and their

7 constitutional rights under the fifth and four8 teenth amendments of the United States Con9 stitution; and

10 (B) compromise the ability of the United

11 States to fulfill its obligations under a variety

12 of international treaties.

13 (12) Article I of the United States Constitution

14 empowers, but does not require, Congress to offer

15 Federal intellectual property protection to any per16 son on such terms as appear reasonable and appro17 priate to serve the public interest by encouraging

18 scientific and artistic innovation and promoting com19 merce and fair competition.

20 (13) Congress can best accomplish the public

21 interests described under paragraph (12) by pro22 viding clear and certain national rules protecting

23 Federal intellectual property rights that establish a

24 level playing field for everyone, including States.
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1 (14) In recent years, States have increasingly

2 elected to avail themselves of the benefits of the

3 Federal intellectual property system by obtaining

4 and enforcing Federal intellectual property rights.

5 (15) Any State should continue to enjoy the

6 benefits of the Federal intellectual property system,

7 if that State accepts the burdens with the benefits.

8 (16) A State should not enjoy the benefits of

9 the Federal intellectual property laws unless it is

10 prepared to have those same laws enforced against

11 that State.

12 (17) Limiting the ability of a State to enjoy the

13 benefits of the Federal intellectual property system

14 will neither prevent the State from providing any

15 services to citizens of that State, nor stop the State

16 from engaging in any commercial activity.

17 (18) If a State waives its sovereign immunity

18 from suit under the Federal intellectual property

19 laws, any constitutional violation resulting from its

20 infringement of a Federal intellectual property right

21 may be remedied in an infringement suit in Federal

22 court.

23 (19) If a State does not waive sovereign immu24 nity with respect to Federal intellectual property

25 laws, it is necessary and appropriate for Congress to
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1 exercise its power under section 5 of the fourteenth

2 amendment to the United States Constitution to

3 protect the constitutional rights of owners of Federal

4 intellectual property rights, which are property inter5 ests protected by the fifth and fourteenth amend6 ments of the United States Constitution.

7 (20) According to the Supreme Court in College

8 Savings Bank, ‘‘The hallmark of a protected prop9 erty interest is the right to exclude others.’’. Pat10 ents, copyrights, and trademarks are constitutionally

11 cognizable species of property because they secure

12 for their owners rights of exclusion against others.

13 (21) A State may not exercise any of the rights

14 conferred by a Federal intellectual property law

15 without the authorization of the right holder, except

16 in the manner and to the extent authorized by such

17 law. In Goldstein v. California, 412 U.S. 546

18 (1973), the Supreme Court stated ‘‘When Congress

19 grants an exclusive right or monopoly, its effects are

20 pervasive; no citizen or State may escape its reach.’’.

21 (22) Because a State engaged in an infringing

22 use of a Federal intellectual property right is acting

23 outside the scope of its sovereign power, such State

24 fails to meet the public use requirement for a taking

25 of property imposed by the fifth amendment of the
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1 United States Constitution (made applicable to the

2 States through the fourteenth amendment).

3 (23) According to the Supreme Court in Hawaii

4 Housing Authority v. Midkiff, 467 U.S. 229 (1984),

5 a claim for the taking of property in violation of the

6 public use requirement is ripe at the time of the tak7 ing.

8 (24) A violation of the Federal intellectual

9 property laws by a State may also constitute an un10 constitutional deprivation of property under the due

11 process clause of the fourteenth amendment of the

12 United States Constitution.

13 (25) In order to enforce Federal intellectual

14 property rights against States under the fifth and

15 fourteenth amendments of the United States Con16 stitution, it is appropriate to provide a right to en17 join any continuing or future constitutional violation

18 and a right to recover sufficient damages to make

19 the injured party whole.

20 (26) Violations of the Federal intellectual prop21 erty laws by States not only impair the constitu22 tional rights of the individual intellectual property

23 owner, but also discourage technological innovation

24 and artistic creation. Moreover, the potential for fu25 ture violations to go unremedied as a result of State
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1 sovereign immunity prevents intellectual property

2 owners from securing fair and efficient fees in li3 censing negotiations.

4 (27) States and instrumentalities of States have

5 been involved in many intellectual property cases.

6 Some States have violated Federal intellectual prop7 erty rights and the constitutional provisions which

8 protect such rights and have refused to waive their

9 constitutional immunities, thereby securing unfair

10 economic advantages over other States and private

11 entities with whom such States may be in competi12 tion.

13 (28) States and instrumentalities of States have

14 become increasingly involved in commerce involving

15 intellectual property rights in recent years, and this

16 trend is likely to continue. As a result, violations of

17 Federal intellectual property rights by States have

18 become increasingly more widespread.

19 (29) It is not practical for Congress to engage

20 in an ongoing particularized inquiry as to which

21 States are violating the United States Constitution

22 at any given time. Accordingly, a national, uniform

23 remedy for constitutional violations is appropriate.

24 (b) PURPOSES.—The purposes of this Act are to—
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1 (1) provide States an opportunity to participate

2 in the Federal intellectual property system on equal

3 terms with private entities;

4 (2) reaffirm the availability of prospective relief

5 to prevent State officials from violating Federal in6 tellectual property laws, and to allow challenges to

7 assertions by State officials of rights secured under

8 such laws, on the same terms and in the same man9 ner as if such State officials were private parties;

10 (3) provide other Federal remedies to owners of

11 Federal intellectual property rights as against the

12 States, State instrumentalities and State officials, to

13 the maximum extent permitted by the United States

14 Constitution; and

15 (4) abrogate State sovereign immunity in suits

16 alleging violations of Federal intellectual property

17 laws or challenging assertions of Federal intellectual

18 property rights by States to the maximum extent

19 permitted by the United States Constitution, pursu20 ant to Congress’s powers under the fifth and four21 teenth amendments of the United States Constitu22 tion and any other applicable provisions.
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1 TITLE I—STATE PARTICIPATION

2 IN THE FEDERAL INTELLEC3 TUAL PROPERTY SYSTEM

4 Subtitle A—Definitions

5 SEC. 101. DEFINITIONS.

6 In this title:

7 (1) FEDERAL INTELLECTUAL PROPERTY

8 LAW.—The term ‘‘Federal intellectual property law’’

9 means a statute or regulation of the United States

10 that governs the creation or protection of any form

11 of intellectual property, including a patent, protected

12 plant variety, copyright, mask work, original design,

13 trademark, or service mark.

14 (2) FEDERAL INTELLECTUAL PROPERTY

15 RIGHT.—The term ‘‘Federal intellectual property

16 right’’ means any of the rights secured under a Fed17 eral intellectual property law.

18 (3) FEDERAL INTELLECTUAL PROPERTY SYS19 TEM.—The term ‘‘Federal intellectual property sys20 tem’’ means the system established under the Fed21 eral intellectual property laws for protecting and en22 forcing Federal intellectual property rights, includ23 ing through the award of damages, injunctions, and

24 declaratory relief.
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1 Subtitle B—Procedures for State

2 Participation in the Federal In3 tellectual Property System

4 SEC. 111. OPT-IN PROCEDURE.

5 (a) IN GENERAL.—No State or any instrumentality

6 of that State may acquire a Federal intellectual property

7 right unless the State opts into the Federal intellectual

8 property system.

9 (b) AGREEMENT TO WAIVE SOVEREIGN IMMU10 NITY.—A State opts into the Federal intellectual property

11 system by providing an assurance under the procedures

12 established in subtitle D of this title with respect to the

13 State’s agreement to waive sovereign immunity from suit

14 in Federal court in any action against the State or any

15 instrumentality or official of that State—

16 (1) arising under a Federal intellectual property

17 law; or

18 (2) seeking a declaration with respect to a Fed19 eral intellectual property right.

20 SEC. 112. BREACH OF ASSURANCE BY A STATE.

21 (a) IN GENERAL.—If a State asserts sovereign immu22 nity contrary to an assurance provided under the proce23 dures established in subtitle D of this title, such State

24 shall be deemed to have breached such assurance.
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1 (b) ASSERTION OF IMMUNITY.—A State asserts sov2 ereign immunity for purposes of subsection (a) if—

3 (1) the State or any instrumentality or official

4 of that State is found to have asserted the State’s

5 sovereign immunity in an action against the State or

6 any instrumentality or official of that State—

7 (A) arising under a Federal intellectual

8 property law; or

9 (B) seeking a declaration with respect to a

10 Federal intellectual property right; and

11 (2) such State, instrumentality, or official does

12 not, within a period of 60 days after such finding,

13 withdraw such assertion of immunity and consent to

14 the continuation or refiling of the action in which

15 the finding was made.

16 (c) EFFECTIVE DATE OF BREACH OF ASSURANCE.—

17 A State shall be deemed to have breached an assurance

18 on the day after the end of the 60-day period provided

19 in subsection (b)(2).

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

21 STATE.

22 (a) ABANDONMENT OF PENDING APPLICATIONS.—

23 Any application by or on behalf of a State or any instru24 mentality or official of that State for protection arising

25 under a Federal intellectual property law shall be regarded
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1 as abandoned and shall not be subject to revival after the

2 date referred to under paragraph (2), if that application—

3 (1) contains an assurance provided under the

4 procedures established in subtitle D; and

5 (2) is pending on the date upon which such

6 State is deemed to have breached an assurance

7 under section 112.

8 (b) ESTABLISHMENT OF DEFENSE TO LIABILITY.—

9 (1) IN GENERAL.—No damages or other mone10 tary relief shall be awarded in any action to enforce

11 a Federal intellectual property right that is or has

12 been owned by or on behalf of a State or any instru13 mentality of that State at any time during the 5-

14 year period preceding the date upon which such

15 State is deemed to have breached an assurance

16 under section 122.

17 (2) NO RETROACTIVE EFFECT.—The defense

18 under paragraph (1) shall not be available in any ac19 tion to enforce a Federal intellectual property right

20 that was owned by or on behalf of a State or an in21 strumentality of a State before the effective date of

22 this title.

23 (c) ONE-YEAR BAR ON ACQUISITION OF NEW

24 RIGHTS.—
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1 (1) IN GENERAL.—A State may not opt back

2 into the Federal intellectual property system under

3 section 111 during the 1-year period following the

4 date upon which that State was deemed to have

5 breached an assurance under section 112.

6 (2) NEW RIGHTS UNENCUMBERED.—Federal

7 intellectual property rights acquired by or on behalf

8 of a State or any instrumentality or official of that

9 State after the State has opted back into the Fed10 eral intellectual property system shall be

11 unencumbered by any prior breach of an assurance.

12 Subtitle C—Administration of Pro13 cedures for State Participation

14 in the Federal Intellectual Prop15 erty System

16 SEC. 121. NOTIFICATION BY COURT OF STATE ASSERTION

17 OF SOVEREIGN IMMUNITY.

18 Not later than 20 days after any finding by a Federal

19 court that a State or any instrumentality or official of that

20 State has asserted the State’s sovereign immunity from

21 suit in that court in an action against the State or any

22 instrumentality or official of that State arising under a

23 Federal intellectual property law, or seeking a declaration

24 with respect to a Federal intellectual property right, the

25 clerk of the court shall notify the Commissioner of Patents
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1 and Trademarks. The clerk shall send with the notification

2 a copy of any order, judgment, or written opinion of the

3 court.

4 SEC. 122. CONFIRMATION BY COMMISSIONER OF PATENTS

5 AND TRADEMARKS OF STATE ASSERTION OF

6 SOVEREIGN IMMUNITY.

7 Not later than 20 days after receiving a notification

8 under section 121, the Commissioner of Patents and

9 Trademarks shall—

10 (1) forward such notification to the attorney

11 general of the State whose sovereign immunity has

12 been found to have been asserted, together with a

13 copy of this title; and

14 (2) inquire of the attorney general whether the

15 State intends to withdraw such assertion of immu16 nity and consent to the continuation or refiling of

17 the action in which the finding was made within the

18 60-day period provided in section 112(b)(2).

19 SEC. 123. PUBLICATION BY COMMISSIONER OF PATENTS

20 AND TRADEMARKS OF STATE ASSERTION OF

21 SOVEREIGN IMMUNITY.

22 (a) IN GENERAL.—The Commissioner of Patents and

23 Trademarks, in consultation with the Secretary of Agri24 culture and the Register of Copyrights, shall publish in

25 the Federal Register and maintain on the Internet infor-
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1 mation concerning the participation of each State in the

2 Federal intellectual property system.

3 (b) CONTENT OF INFORMATION.—The information

4 under subsection (a) shall include, for each State—

5 (1) whether the State’s sovereign immunity

6 from suit in Federal court has been asserted under

7 section 112(b); and

8 (2) the name of the case and court in which

9 such assertion of immunity was made.

10 SEC. 124. RULEMAKING AUTHORITY.

11 The Commissioner of Patents and Trademarks may,

12 pursuant to section 6 of title 35, United States Code, pro13 mulgate such rules as necessary to implement the provi14 sions of this subtitle.

15 Subtitle D—Amendments to the

16 Federal Intellectual Property Laws

17 SEC. 131. CONDITIONS FOR STATE PARTICIPATION IN THE

18 FEDERAL PATENT SYSTEM.

19 (a) APPLICATION FOR PATENT.—Section 111 of title

20 35, United States Code, is amended by adding at the end

21 the following:

22 ‘‘(c) APPLICATION BY OR ON BEHALF OF A STATE.—

23 When an application for patent or a provisional applica24 tion for patent is made by or on behalf of a State, an
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1 instrumentality of a State, or a State official acting in an

2 official capacity, the Commissioner shall require—

3 ‘‘(1) an assurance that, during the pendency of

4 the application and the term of any patent resulting

5 from that application, the State’s sovereign immu6 nity from suit in Federal court will be waived in any

7 action against the State or any instrumentality or

8 official of that State—

9 ‘‘(A) arising under a Federal intellectual

10 property law; or

11 ‘‘(B) seeking a declaration with respect to

12 a Federal intellectual property right; and

13 ‘‘(2) a certification that, during the 1-year pe14 riod preceding the date of the application, the

15 State’s sovereign immunity from suit in Federal

16 court has not been asserted in any action described

17 in paragraph (1).’’.

18 (b) ASSIGNMENT AND RECORDATION.—Section 261

19 of title 35, United States Code, is amended—

20 (1) by striking ‘‘Subject to the provisions of

21 this title’’ in the first sentence and inserting ‘‘(a) IN

22 GENERAL.—Subject to the provisions of this title’’;

23 and

24 (2) by adding at the end the following:
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1 ‘‘(b) RECORDATION BY OR ON BEHALF OF A

2 STATE.—When an assignment, grant, or conveyance of an

3 application for patent, patent, or any interest in that pat4 ent, is recorded in the Patent and Trademark Office by

5 or on behalf of a State, an instrumentality of a State, or

6 a State official acting in an official capacity, the Commis7 sioner shall require—

8 ‘‘(1) an assurance that, during the pendency of

9 the application and the term of any patent resulting

10 from that application, or during the remaining term

11 of the patent or any interest in that patent, the

12 State’s sovereign immunity from suit in Federal

13 court will be waived in any action against the State

14 or any instrumentality or official of that State—

15 ‘‘(A) arising under a Federal intellectual

16 property law; or

17 ‘‘(B) seeking a declaration with respect to

18 a Federal intellectual property right; and

19 ‘‘(2) a certification that, during the 1-year pe20 riod preceding the date of the recordation, the

21 State’s sovereign immunity from suit in Federal

22 court has not been asserted in any action described

23 in paragraph (1).’’.
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1 SEC. 132. CONDITIONS FOR STATE PARTICIPATION IN THE

2 FEDERAL PLANT VARIETY PROTECTION SYS3 TEM.

4 (a) APPLICATION FOR CERTIFICATE OF PROTEC5 TION.—Section 52 of the Plant Variety Protection Act (7

6 U.S.C. 2422) is amended—

7 (1) by striking ‘‘An application for a certifi8 cate’’ in the first sentence and inserting ‘‘(a) An ap9 plication for a certificate’’; and

10 (2) by adding at the end the following:

11 ‘‘(b) When an application for plant variety protection

12 is made by or on behalf of a State, an instrumentality

13 of a State, or a State official acting in an official capacity,

14 the Secretary shall require—

15 ‘‘(1) an assurance that, during the pendency of

16 the application and the term of any plant variety

17 protection resulting from that application, the

18 State’s sovereign immunity from suit in Federal

19 court will be waived in any action against the State

20 or any instrumentality or official of that State—

21 ‘‘(A) arising under a Federal intellectual

22 property law; or

23 ‘‘(B) seeking a declaration with respect to

24 a Federal intellectual property right; and

25 ‘‘(2) a certification that, during the 1-year pe26 riod preceding the date of the application, the
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1 State’s sovereign immunity from suit in Federal

2 court has not been asserted in any action described

3 in paragraph (1).’’.

4 (b) ASSIGNMENT AND RECORDATION.—Section 101

5 of the Plant Variety Protection Act (7 U.S.C. 2531) is

6 amended by adding at the end the following:

7 ‘‘(e) When an assignment, grant, conveyance, or li8 cense of plant variety protection or application for plant

9 variety protection is filed for recording in the Plant Vari10 ety Protection Office by or on behalf of a State, an instru11 mentality of a State, or a State official acting in an official

12 capacity, the Secretary shall require—

13 ‘‘(1) an assurance that, during the remaining

14 term of the plant variety protection, or during the

15 pendency of the application and the term of any

16 plant variety protection resulting from that applica17 tion, the State’s sovereign immunity from suit in

18 Federal court will be waived in any action against

19 the State or any instrumentality or official of that

20 State—

21 ‘‘(A) arising under a Federal intellectual

22 property law; or

23 ‘‘(B) seeking a declaration with respect to

24 a Federal intellectual property right; and
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1 ‘‘(2) a certification that, during the 1-year pe2 riod preceding the date of the recordation, the

3 State’s sovereign immunity from suit in Federal

4 court has not been asserted in any action described

5 in paragraph (1).’’.

6 SEC. 133. CONDITIONS FOR STATE PARTICIPATION IN THE

7 FEDERAL COPYRIGHT SYSTEM.

8 Section 409 of title 17, United States Code, is

9 amended—

10 (1) in paragraph (10), by striking ‘‘and’’ at the

11 end;

12 (2) by redesignating paragraph (11) as para13 graph (12); and

14 (3) by inserting after paragraph (10) the fol15 lowing:

16 ‘‘(11) if the application is by or on behalf of a

17 State or an instrumentality of a State—

18 ‘‘(A) an assurance that, during the pend19 ency of the application and the subsistence of

20 any copyright identified in that application, the

21 State’s sovereign immunity from suit in Federal

22 court will be waived in any action against the

23 State or any instrumentality or official of that

24 State—
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1 ‘‘(i) arising under a Federal intellec2 tual property law; or

3 ‘‘(ii) seeking a declaration with re4 spect to a Federal intellectual property

5 right; and

6 ‘‘(B) a certification that, during the 1-year

7 period preceding the date of the application, the

8 State’s sovereign immunity from suit in Federal

9 court has not been asserted in any action de10 scribed in subparagraph (A); and’’.

11 SEC. 134. CONDITIONS FOR STATE PARTICIPATION IN THE

12 FEDERAL MASK WORK SYSTEM.

13 Section 908 of title 17, United States Code, is

14 amended by adding at the end the following:

15 ‘‘(h) When an application for registration of a mask

16 work is made by or on behalf of a State or an instrumen17 tality of a State, the Register of Copyrights shall

18 require—

19 ‘‘(1) an assurance that, during the pendency of

20 the application and any term of protection resulting

21 from that application, the State’s sovereign immu22 nity from suit in Federal court will be waived in any

23 action against the State or any instrumentality or

24 official of that State—
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1 ‘‘(A) arising under a Federal intellectual

2 property law; or

3 ‘‘(B) seeking a declaration with respect to

4 a Federal intellectual property right; and

5 ‘‘(2) a certification that, during the 1-year pe6 riod preceding the date of the application, the

7 State’s sovereign immunity from suit in Federal

8 court has not been asserted in any action described

9 in paragraph (1).’’.

10 SEC. 135. CONDITIONS FOR STATE PARTICIPATION IN THE

11 FEDERAL ORIGINAL DESIGN SYSTEM.

12 Section 1310 of title 17, United States Code, is

13 amended by adding at the end the following:

14 ‘‘(k) APPLICATION BY OR ON BEHALF OF A STATE

15 OR AN INSTRUMENTALITY OF A STATE.—When an appli16 cation for registration of a design is made by or on behalf

17 of a State or an instrumentality of a State, the Adminis18 trator shall require—

19 ‘‘(1) an assurance that, during the pendency of

20 the application and any term of protection resulting

21 from that application, the State’s sovereign immu22 nity from suit in Federal court will be waived in any

23 action against the State or any instrumentality or

24 official of that State—
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1 ‘‘(A) arising under a Federal intellectual

2 property law; or

3 ‘‘(B) seeking a declaration with respect to

4 a Federal intellectual property right; and

5 ‘‘(2) a certification that, during the 1-year pe6 riod preceding the date of the application, the

7 State’s sovereign immunity from suit in Federal

8 court has not been asserted in any action described

9 in paragraph (1).’’.

10 SEC. 136. CONDITIONS FOR STATE PARTICIPATION IN THE

11 FEDERAL TRADEMARK SYSTEM.

12 (a) APPLICATION FOR USE OF TRADEMARK OR

13 SERVICE MARK.—Section 1 of the Trademark Act of 1946

14 (15 U.S.C. 1051) is amended by adding at the end the

15 following:

16 ‘‘(f) When an application under subsection (a) or (b)

17 of this section is made by or on behalf of a State or an

18 instrumentality of a State, the Commissioner shall

19 require—

20 ‘‘(1) an assurance that, during the pendency of

21 the application and for as long as the mark is reg22 istered, the State’s sovereign immunity from suit in

23 Federal court will be waived in any action against

24 the State or any instrumentality or official of that

25 State—
27

•S 1835 IS

1 ‘‘(A) arising under a Federal intellectual

2 property law; or

3 ‘‘(B) seeking a declaration with respect to

4 a Federal intellectual property right; and

5 ‘‘(2) a certification that, during the 1-year pe6 riod preceding the date of the application, the

7 State’s sovereign immunity from suit in Federal

8 court has not been asserted in any action described

9 in paragraph (1).’’.

10 (b) ASSIGNMENT AND RECORDATION.—Section 10 of

11 the Trademark Act of 1946 (15 U.S.C. 1060) is

12 amended—

13 (1) by inserting ‘‘(a)’’ before ‘‘A registered

14 mark’’;

15 (2) by inserting ‘‘(b)’’ before ‘‘An assignee not

16 domiciled’’; and

17 (3) by adding at the end the following:

18 ‘‘(c) When an assignment of a registered mark or a

19 mark for which an application to register has been filed

20 is recorded in the Patent and Trademark Office by or on

21 behalf of a State or an instrumentality of a State, the

22 Commissioner shall require—

23 ‘‘(1) an assurance that, during the pendency of

24 any application and for as long as any mark is reg25 istered, the State’s sovereign immunity from suit in
28

•S 1835 IS

1 Federal court will be waived in any action against

2 the State or any instrumentality or official of that

3 State—

4 ‘‘(A) arising under a Federal intellectual

5 property law; or

6 ‘‘(B) seeking a declaration with respect to

7 a Federal intellectual property right; and

8 ‘‘(2) a certification that, during the 1-year pe9 riod preceding the date of the recordation, the

10 State’s sovereign immunity from suit in Federal

11 court has not been asserted in any action described

12 in paragraph (1).’’.

13 SEC. 137. NO RETROACTIVE EFFECT.

14 The amendments made by this subtitle shall not

15 apply to—

16 (1) any application pending before the effective

17 date of this title; or

18 (2) any assertion of sovereign immunity made

19 before the effective date of this title.
29

•S 1835 IS

1 TITLE II—RESTORATION OF

2 PROTECTION FOR FEDERAL

3 INTELLECTUAL PROPERTY

4 RIGHTS

5 SEC. 201. LIABILITY OF STATES FOR PATENT VIOLATIONS.

6 Section 296 of title 35, United States Code, is

7 amended to read as follows:

8 ‘‘§ 296. Liability of States, instrumentalities of States,

9 and State officials for infringement of

10 patents

11 ‘‘(a) REMEDY FOR STATUTORY VIOLATION.—In any

12 action against an officer or employee of a State for in13 fringement of a patent under section 271, or for any other

14 violation under this title, prospective relief is available

15 against the officer or employee in the same manner and

16 to the same extent as such relief is available in an action

17 against a private individual under like circumstances. Pro18 spective relief may include injunctions under section 283,

19 attorney fees under section 285, and declaratory relief

20 under section 2201 of title 28.

21 ‘‘(b) REMEDY FOR CONSTITUTIONAL VIOLATION.—

22 ‘‘(1) DEFINITION.—In this subsection, the term

23 ‘State’ includes a State, an instrumentality of a

24 State, and an officer or employee of a State acting

25 in an official capacity.
30

•S 1835 IS

1 ‘‘(2) IN GENERAL.—

2 ‘‘(A) REMEDIES.—Any State that takes

3 any of the rights of exclusion secured under

4 this chapter in violation of the fifth amendment

5 of the United States Constitution, or deprives

6 any person of any of the rights of exclusion se7 cured under this chapter without due process of

8 law in violation of the fourteenth amendment—

9 ‘‘(i) shall be liable to the party injured

10 in a civil action against the State for the

11 recovery of that party’s reasonable and en12 tire compensation; and

13 ‘‘(ii) may be enjoined from continuing

14 or future constitutional violations, in ac15 cordance with the principles of equity and

16 upon such terms as the court may deter17 mine reasonable.

18 ‘‘(B) COMPENSATION.—Reasonable and

19 entire compensation may include damages, in20 terest, and costs under section 284, attorney

21 fees under section 285, and the additional rem22 edy for infringement of design patents under

23 section 289.

24 ‘‘(3) LIMITATIONS.—
31

•S 1835 IS

1 ‘‘(A) IN GENERAL.—The remedy provided

2 under paragraph (2) is not available in an ac3 tion against—

4 ‘‘(i) a State that has waived its sov5 ereign immunity from suit in Federal court

6 for damages resulting from a violation of

7 this title; or

8 ‘‘(ii) a State official in an individual

9 capacity.

10 ‘‘(B) REMEDIES.—Remedies (including

11 remedies both at law and in equity) are avail12 able against such State or State official in the

13 same manner and to the same extent as such

14 remedies are available in an action against a

15 private entity or individual under like cir16 cumstances.

17 ‘‘(4) BURDEN OF PROOF.—If a claimant pro18 duces prima facie evidence to support a claim under

19 paragraph (2), the burden of proof shall be on the

20 State, except as to any elements of the claim that

21 would have to be proved if the action were brought

22 under another provision of this title. The burden of

23 proof shall be unaffected with respect to any such

24 element.
32

•S 1835 IS

1 ‘‘(c) PREEMPTION.—No State may use or manufac2 ture the invention described in or covered by a patent

3 without the authorization or consent of the patent owner,

4 except in the manner and to the extent authorized by Fed5 eral law.’’.

6 SEC. 202. LIABILITY OF STATES FOR VIOLATION OF PLANT

7 VARIETY PROTECTION.

8 Section 130 of the Plant Variety Protection Act (7

9 U.S.C. 2570) is amended to read as follows:

10 ‘‘SEC. 130. LIABILITY OF STATES, INSTRUMENTALITIES OF

11 STATES, AND STATE OFFICIALS FOR IN12 FRINGEMENT OF PLANT VARIETY PROTEC13 TION.

14 ‘‘(a) In any action against an officer or employee of

15 a State for infringement of plant variety protection under

16 section 111, or for any other violation under this chapter,

17 prospective relief is available against the officer or em18 ployee in the same manner and to the same extent as such

19 relief is available in an action against a private individual

20 under like circumstances. Prospective relief may include

21 injunctions under section 123, attorney fees under section

22 125, and declaratory relief under section 2201 of title 28,

23 United States Code.
33

•S 1835 IS

1 ‘‘(b)(1) In this subsection, the term ‘State’ includes

2 a State, an instrumentality of a State, and an officer or

3 employee of a State acting in an official capacity.

4 ‘‘(2)(A) Any State that takes any of the rights of ex5 clusion secured under this chapter in violation of the fifth

6 amendment of the United States Constitution, or deprives

7 any person of any of the rights of exclusion secured under

8 this chapter without due process of law in violation of the

9 fourteenth amendment—

10 ‘‘(i) shall be liable to the party injured in a civil

11 action against the State for the recovery of that par12 ty’s reasonable and entire compensation; and

13 ‘‘(ii) may be enjoined from continuing or future

14 constitutional violations, in accordance with the prin15 ciples of equity and upon such terms as the court

16 may determine reasonable.

17 ‘‘(B) Reasonable and entire compensation may in18 clude damages, interest, and costs under section 124, and

19 attorney fees under section 125.

20 ‘‘(3)(A) The remedy provided under paragraph (2) is

21 not available in an action against—

22 ‘‘(i) a State that has waived its sovereign im23 munity from suit in Federal court for damages re24 sulting from a violation of this chapter; or

25 ‘‘(ii) a State official in an individual capacity.
34

•S 1835 IS

1 ‘‘(B) Remedies (including remedies both at law and

2 in equity) are available against such State or State official

3 in the same manner and to the same extent as such rem4 edies are available in an action against a private entity

5 or individual under like circumstances.

6 ‘‘(4) If a claimant produces prima facie evidence to

7 support a claim under paragraph (2), the burden of proof

8 shall be on the State, except as to any elements of the

9 claim that would have to be proved if the action were

10 brought under another provision of this chapter. The bur11 den of proof shall be unaffected with respect to any such

12 element.

13 ‘‘(c) No State may exercise any rights of the owner

14 of a plant variety protected by a certificate of plant variety

15 protection under this chapter without the authorization or

16 consent of such owner, except in the manner and to the

17 extent authorized by Federal law.’’.

18 SEC. 203. LIABILITY OF STATES FOR COPYRIGHT VIOLA19 TIONS.

20 Section 511 of title 17, United States Code, is

21 amended to read as follows:
35

•S 1835 IS

1 ‘‘§ 511. Liability of States, instrumentalities of States,

2 and State officials for infringement of

3 copyright

4 ‘‘(a) REMEDY FOR STATUTORY VIOLATION.—In any

5 action against an officer or employee of a State for viola6 tion of any rights of a copyright owner as provided in sec7 tions 106 through 121 or of an author as provided in sec8 tion 106A, or for any other violation under this title, pro9 spective relief is available against the officer or employee

10 in the same manner and to the same extent as such relief

11 is available in an action against a private individual under

12 like circumstances. Prospective relief may include injunc13 tions under section 502, impounding and disposition of in14 fringing articles under section 503, costs and attorney fees

15 under section 505, and declaratory relief under section

16 2201 of title 28.

17 ‘‘(b) REMEDY FOR CONSTITUTIONAL VIOLATION.—

18 ‘‘(1) DEFINITION.—In this subsection, the term

19 ‘State’ includes a State, an instrumentality of a

20 State, and an officer or employee of a State acting

21 in an official capacity.

22 ‘‘(2) IN GENERAL.—

23 ‘‘(A) REMEDIES.—Any State that takes

24 any of the rights of exclusion secured under

25 this title in violation of the fifth amendment of

26 the United States Constitution, or deprives any
36

•S 1835 IS

1 person of any of the rights of exclusion secured

2 under this title without due process of law in

3 violation of the fourteenth amendment—

4 ‘‘(i) shall be liable to the party injured

5 in a civil action against the State for the

6 recovery of that party’s reasonable and en7 tire compensation; and

8 ‘‘(ii) may be enjoined from continuing

9 or future constitutional violations, in ac10 cordance with the principles of equity and

11 upon such terms as the court may deter12 mine reasonable.

13 ‘‘(B) COMPENSATION.—Reasonable and

14 entire compensation may include actual dam15 ages and profits or statutory damages under

16 section 504, and costs and attorney fees under

17 section 505.

18 ‘‘(3) LIMITATIONS.—

19 ‘‘(A) IN GENERAL.—The remedy provided

20 under paragraph (2) is not available in an ac21 tion against—

22 ‘‘(i) a State that has waived its sov23 ereign immunity from suit in Federal court

24 for damages resulting from a violation of

25 this title; or
37

•S 1835 IS

1 ‘‘(ii) a State official in an individual

2 capacity.

3 ‘‘(B) REMEDIES.—Remedies (including

4 remedies both at law and in equity) are avail5 able against such State or State official in the

6 same manner and to the same extent as such

7 remedies are available in an action against a

8 private entity or individual under like cir9 cumstances.

10 ‘‘(4) BURDEN OF PROOF.—If a claimant pro11 duces prima facie evidence to support a claim under

12 paragraph (2), the burden of proof shall be on the

13 State, except as to any elements of the claim that

14 would have to be proved if the action were brought

15 under another provision of this title. The burden of

16 proof shall be unaffected with respect to any such

17 element.

18 ‘‘(c) PREEMPTION.—No State may exercise any

19 rights of a copyright owner protected under this title with20 out the authorization or consent of such owner, except in

21 the manner and to the extent authorized by Federal law.’’.

22 SEC. 204. LIABILITY OF STATES FOR MASK WORK VIOLA23 TIONS.

24 (a) IN GENERAL.—Chapter 9 of title 17, United

25 States Code, is amended—
38

•S 1835 IS

1 (1) in section 911, by striking subsection (g);

2 and

3 (2) by adding at the end the following:

4 ‘‘§ 915. Liability of States, instrumentalities of States,

5 and State officials for violation of mask

6 works

7 ‘‘(a) REMEDY FOR STATUTORY VIOLATION.—In any

8 action against an officer or employee of a State for in9 fringement of any rights in a mask work protected under

10 this chapter, or for any other violation under this chapter,

11 prospective relief is available against the officer or em12 ployee in the same manner and to the same extent as such

13 relief is available in an action against a private individual

14 under like circumstances. Prospective relief may include

15 injunctive relief under section 911(a), impounding and de16 struction of infringing products under section 911(e),

17 costs and attorney fees under section 911(f), and declara18 tory relief under section 2201 of title 28.

19 ‘‘(b) REMEDY FOR CONSTITUTIONAL VIOLATION.—

20 ‘‘(1) DEFINITION.—In this subsection, the term

21 ‘State’ includes a State, an instrumentality of a

22 State, and an officer or employee of a State acting

23 in an official capacity.

24 ‘‘(2) IN GENERAL.—
39

•S 1835 IS

1 ‘‘(A) REMEDIES.—Any State that takes

2 any of the rights of exclusion secured under

3 this chapter in violation of the fifth amendment

4 of the United States Constitution, or deprives

5 any person of any of the rights of exclusion se6 cured under this chapter without due process of

7 law in violation of the fourteenth amendment—

8 ‘‘(i) shall be liable to the party injured

9 in a civil action against the State for the

10 recovery of that party’s reasonable and en11 tire compensation; and

12 ‘‘(ii) may be enjoined from continuing

13 or future constitutional violations, in ac14 cordance with the principles of equity and

15 upon such terms as the court may deter16 mine reasonable.

17 ‘‘(B) COMPENSATION.—Reasonable and

18 entire compensation may include actual dam19 ages and profits under section 911(b) or statu20 tory damages under section 911(c), and costs

21 and attorney fees under section 911(f).

22 ‘‘(3) LIMITATIONS.—

23 ‘‘(A) IN GENERAL.—The remedy provided

24 under paragraph (2) is not available in an ac25 tion against—
40

•S 1835 IS

1 ‘‘(i) a State that has waived its sov2 ereign immunity from suit in Federal court

3 for damages resulting from a violation of

4 this title; or

5 ‘‘(ii) a State official in an individual

6 capacity.

7 ‘‘(B) REMEDIES.—Remedies (including

8 remedies both at law and in equity) are avail9 able against such State or State official in the

10 same manner and to the same extent as such

11 remedies are available in an action against a

12 private entity or individual under like cir13 cumstances.

14 ‘‘(4) BURDEN OF PROOF.—If a claimant pro15 duces prima facie evidence to support a claim under

16 paragraph (2), the burden of proof shall be on the

17 State, except as to any elements of the claim that

18 would have to be proved if the action were brought

19 under another provision of this chapter. The burden

20 of proof shall be unaffected with respect to any such

21 element.

22 ‘‘(c) PREEMPTION.—No State may exercise any

23 rights of the owner of a mask work protected under this

24 chapter without the authorization or consent of such
41

•S 1835 IS

1 owner, except in the manner and to the extent authorized

2 by Federal law.’’.

3 (b) CONFORMING AMENDMENT.—The table of sec4 tions for chapter 9 of title 17, United States Code, is

5 amended by adding at the end the following:

‘‘915. Liability of States, instrumentalities of States, and State officials for violation of mask works.’’.

6 SEC. 205. LIABILITY OF STATES FOR ORIGINAL DESIGN

7 VIOLATIONS.

8 (a) IN GENERAL.—Chapter 13 of title 17, United

9 States Code, is amended—

10 (1) in section 1309(a), by adding at the end the

11 following: ‘‘In this subsection, the term ‘any person’

12 includes any State, any instrumentality of a State,

13 and any officer or employee of a State or instrumen14 tality of a State acting in an official capacity. Any

15 State, and any such instrumentality, officer, or em16 ployee, shall be subject to the provisions of this

17 chapter in the same manner and to the same extent

18 as any nongovernmental entity.’’; and

19 (2) by adding at the end the following:

20 ‘‘§ 1333. Liability of States, instrumentalities of

21 States, and State officials for violation of

22 original designs

23 ‘‘(a) REMEDY FOR STATUTORY VIOLATION.—In any

24 action against an officer or employee of a State for in-
42

•S 1835 IS

1 fringement of any rights in a design protected under this

2 chapter, or for any other violation under this chapter, pro3 spective relief is available against the officer or employee

4 in the same manner and to the same extent as such relief

5 is available in an action against a private individual under

6 like circumstances. Prospective relief may include injunc7 tions under section 1322, attorney fees under section

8 1323(d), disposition of infringing and other articles under

9 section 1323(e), and declaratory relief under section 2201

10 of title 28.

11 ‘‘(b) REMEDY FOR CONSTITUTIONAL VIOLATION.—

12 ‘‘(1) DEFINITION.—In this subsection, the term

13 ‘State’ includes a State, an instrumentality of a

14 State, and an officer or employee of a State acting

15 in an official capacity.

16 ‘‘(2) IN GENERAL.—

17 ‘‘(A) REMEDIES.—Any State that takes

18 any of the rights of exclusion secured under

19 this chapter in violation of the fifth amendment

20 of the United States Constitution, or deprives

21 any person of any of the rights of exclusion se22 cured under this chapter without due process of

23 law in violation of the fourteenth amendment—

24 ‘‘(i) shall be liable to the party injured

25 in a civil action against the State for the
43

•S 1835 IS

1 recovery of that party’s reasonable and en2 tire compensation; and

3 ‘‘(ii) may be enjoined from continuing

4 or future constitutional violations, in ac5 cordance with the principles of equity and

6 upon such terms as the court may deter7 mine reasonable.

8 ‘‘(B) COMPENSATION.—Reasonable and

9 entire compensation may include damages, prof10 its, and attorney fees under section 1323.

11 ‘‘(3) LIMITATIONS.—

12 ‘‘(A) IN GENERAL.—The remedy provided

13 under paragraph (2) is not available in an ac14 tion against—

15 ‘‘(i) a State that has waived its sov16 ereign immunity from suit in Federal court

17 for damages resulting from a violation of

18 this title; or

19 ‘‘(ii) a State official in an individual

20 capacity.

21 ‘‘(B) REMEDIES.—Remedies (including

22 remedies both at law and in equity) are avail23 able against such State or State official in the

24 same manner and to the same extent as such

25 remedies are available in an action against a
44

•S 1835 IS

1 private entity or individual under like cir2 cumstances.

3 ‘‘(4) BURDEN OF PROOF.—If a claimant pro4 duces prima facie evidence to support a claim under

5 paragraph (2), the burden of proof shall be on the

6 State, except as to any elements of the claim that

7 would have to be proved if the action were brought

8 under another provision of this chapter. The burden

9 of proof shall be unaffected with respect to any such

10 element.

11 ‘‘(c) PREEMPTION.—No State may exercise any

12 rights of the owner of a design protected under this chap13 ter without the authorization or consent of such owner,

14 except in the manner and to the extent authorized by Fed15 eral law.’’.

16 (b) CONFORMING AMENDMENT.—The table of sec17 tions for chapter 13 of title 17, United States Code, is

18 amended by adding at the end the following:

‘‘1333. Liability of States, instrumentalities of States, and State officials for violation of original designs.’’.

19 SEC. 206. LIABILITY OF STATES FOR TRADEMARK VIOLA20 TIONS.

21 Section 40 of the Trademark Act of 1946 (15 U.S.C.

22 1122) is amended to read as follows:
45

•S 1835 IS

1 ‘‘SEC. 40. LIABILITY OF STATES, INSTRUMENTALITIES OF

2 STATES, AND STATE OFFICIALS FOR IN3 FRINGEMENT OF TRADEMARKS.

4 ‘‘(a) REMEDY FOR STATUTORY VIOLATION.—In any

5 action against an officer or employee of a State for in6 fringement of a trademark under section 32, or for any

7 other violation under this Act, prospective relief is avail8 able against the officer or employee in the same manner

9 and to the same extent as such relief is available in an

10 action against a private individual under like cir11 cumstances. Prospective relief may include injunctive re12 lief under section 34, costs and attorney fees under section

13 35, destruction of infringing articles under section 36, and

14 declaratory relief under section 2201 of title 28, United

15 States Code.

16 ‘‘(b) REMEDY FOR CONSTITUTIONAL VIOLATION.—

17 ‘‘(1) DEFINITION.—In this subsection, the term

18 ‘State’ includes a State, an instrumentality of a

19 State, and an officer or employee of a State acting

20 in an official capacity.

21 ‘‘(2) IN GENERAL.—

22 ‘‘(A) REMEDIES.—Any State that takes

23 any of the rights of exclusion secured under

24 this Act in violation of the fifth amendment of

25 the United States Constitution, or deprives any

26 person of any of the rights of exclusion secured
46

•S 1835 IS

1 under this Act without due process of law in

2 violation of the fourteenth amendment—

3 ‘‘(i) shall be liable to the party injured

4 in a civil action against the State for the

5 recovery of that party’s reasonable and en6 tire compensation; and

7 ‘‘(ii) may be enjoined from continuing

8 or future constitutional violations, in ac9 cordance with the principles of equity and

10 upon such terms as the court may deter11 mine reasonable.

12 ‘‘(B) COMPENSATION.—Reasonable and

13 entire compensation may include actual dam14 ages and profits or statutory damages, and

15 costs and attorney fees under section 35.

16 ‘‘(3) LIMITATIONS.—

17 ‘‘(A) IN GENERAL.—The remedy provided

18 under paragraph (2) is not available in an ac19 tion against—

20 ‘‘(i) a State that has waived its sov21 ereign immunity from suit in Federal court

22 for damages resulting from a violation of

23 this title; or

24 ‘‘(ii) a State official in an individual

25 capacity.
47

•S 1835 IS

1 ‘‘(B) REMEDIES.—Remedies (including

2 remedies both at law and in equity) are avail3 able against such State or State official in the

4 same manner and to the same extent as such

5 remedies are available in an action against a

6 private entity or individual under like cir7 cumstances.

8 ‘‘(4) BURDEN OF PROOF.—If a claimant pro9 duces prima facie evidence to support a claim under

10 paragraph (2), the burden of proof shall be on the

11 State, except as to any elements of the claim that

12 would have to be proved if the action were brought

13 under another provision of this Act. The burden of

14 proof shall be unaffected with respect to any such

15 element.

16 ‘‘(c) PREEMPTION.—No State may use a federally

17 registered mark for the same or similar goods or service

18 without the authorization or consent of the owner of the

19 mark, except in the manner and to the extent authorized

20 by Federal law.’’.

21 SEC. 207. RULES OF CONSTRUCTION.

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

23 original jurisdiction of any action arising under this title

24 and the amendments made by this title under section 1338

25 of title 28, United States Code.
48

•S 1835 IS

1 (b) BROAD CONSTRUCTION.—This title and the

2 amendments made by this title shall be construed in favor

3 of a broad protection of Federal intellectual property

4 rights, to the maximum extent permitted by this title and

5 the United States Constitution.

6 TITLE III—EFFECTIVE DATES

7 SEC. 301. EFFECTIVE DATES.

8 (a) TITLE I.—Title I of this Act and the amendments

9 made by that title shall take effect 90 days after the date

10 of enactment of this Act.

11 (b) TITLE II.—The amendments made by title II of

12 this Act shall take effect with respect to violations that

13 occur on or after the date of enactment of this Act.

14 SEC. 302. SEVERABILITY.

15 If any provision of this Act or of an amendment made

16 by this Act, or any application of such provision to any

17 person or circumstance, is held to be unconstitutional, the

18 remainder of this Act, the amendments made by this Act,

19 and the application of the provision to any other person

20 or circumstance shall not be affected.

Æ