I 
108TH CONGRESS 
1ST SESSION H. R. 2344
To restore Federal remedies for infringements of intellectual property by 
States, and for other purposes. 
IN THE HOUSE OF REPRESENTATIVES 
JUNE 5, 2003
Mr. SMITH of Texas (for himself and Mr. BERMAN) introduced the following 
bill; which was referred to the Committee on the Judiciary 
A BILL 
To restore Federal remedies for infringements of intellectual 
property by States, and for other purposes.
Be it enacted by the Senate and House of Representa-
tives of the United States of America in Congress assembled, 
SECTION 1. SHORT TITLE; REFERENCES. 
(a) SHORT TITLE.—This Act may be cited as the 
‘‘Intellectual Property Protection Restoration Act of 
2003’’. 
(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 protec-
tion of trademarks used in commerce, to carry out the pro-
visions of certain international conventions, and for other 
purposes’’, approved July 5, 1946 (15 U.S.C. 1051 et 
seq.). 
SEC. 2. PURPOSES. 
The purposes of this Act are to—
(1) help eliminate the unfair commercial advan-
tage that States and their instrumentalities now 
hold in the Federal intellectual property system be-
cause of their ability to obtain protection under the 
United States patent, copyright, and trademark laws 
while remaining exempt from liability for infringing 
the rights of others; 
(2) promote technological innovation and artis-
tic creation in furtherance of the policies underlying 
Federal laws and international treaties relating to 
intellectual property; 
(3) reaffirm the availability of prospective relief 
against State officials who are violating or who 
threaten to violate Federal intellectual property 
laws; and 
(4) abrogate State sovereign immunity in cases 
where States or their instrumentalities, officers, or 
employees violate the United States Constitution by 
infringing Federal intellectual property.
SEC. 3. INTELLECTUAL PROPERTY REMEDIES EQUALI-
ZATION. 
(a) AMENDMENT TO PATENT LAW.—Section 287 of 
title 35, United States Code, is amended by adding at the 
end the following: 
‘‘(d)(1) No remedies under section 284 or 289 shall 
be awarded in any civil action brought under this title for 
infringement of a patent issued on or after January 1, 
2004, if a State or State instrumentality is or was at any 
time the legal or beneficial owner of such patent, except 
upon proof that—
‘‘(A) on or before the date the infringement 
commenced or January 1, 2006, whichever is later, 
the State has waived its immunity, under the elev-
enth amendment of the United States Constitution 
and under any other doctrine of sovereign immunity, 
from suit in Federal court brought against the State 
or any of its instrumentalities, for any infringement 
of intellectual property protected under Federal law; 
and 
‘‘(B) such waiver was made in accordance with 
the constitution and laws of the State, and remains 
effective. 
‘‘(2) The limitation on remedies under paragraph (1) 
shall not apply with respect to a patent if—
‘‘(A) the limitation would materially and ad-
versely affect a legitimate contract-based expectation 
in existence before January 1, 2004; or 
‘‘(B) the party seeking remedies was a bona 
fide purchaser for value of the patent, and, at the 
time of the purchase, did not know and was reason-
ably without cause to believe that a State or State 
instrumentality was once the legal or beneficial 
owner of the patent. 
‘‘(3) The limitation on remedies under paragraph (1) 
may be raised at any point in a proceeding, through the 
conclusion of the action. If raised before January 1, 2006, 
the court may stay the proceeding for a reasonable time, 
but not later than January 1, 2006, to afford the State 
an opportunity to waive its immunity as provided in para-
graph (1).’’. 
(b) AMENDMENT TO COPYRIGHT LAW.—Section 504 
of title 17, United States Code, is amended by adding at 
the end the following: 
‘‘(e) LIMITATION
ON
REMEDIES
IN
CERTAIN 
CASES.—
‘‘(1) No remedies under this section shall be 
awarded in any civil action brought under this title 
for infringement of an exclusive right in a work cre-
ated on or after January 1, 2004, if a State or State
instrumentality is or was at any time the legal or 
beneficial owner of such right, except upon proof 
that—
‘‘(A) on or before the date the infringe-
ment commenced or January 1, 2006, which-
ever is later, the State has waived its immunity, 
under the eleventh amendment of the United 
States Constitution and under any other doc-
trine of sovereign immunity, from suit in Fed-
eral court brought against the State or any of 
its instrumentalities, for any infringement of in-
tellectual property protected under Federal law; 
and 
‘‘(B) such waiver was made in accordance 
with the constitution and laws of the State, and 
remains effective. 
‘‘(2) The limitation on remedies under para-
graph (1) shall not apply with respect to an exclu-
sive right if—
‘‘(A) the limitation would materially and 
adversely affect a legitimate contract-based ex-
pectation in existence before January 1, 2004; 
or 
‘‘(B) the party seeking remedies was a 
bona fide purchaser for value of the exclusive
right, and, at the time of the purchase, did not 
know and was reasonably without cause to be-
lieve that a State or State instrumentality was 
once the legal or beneficial owner of the right. 
‘‘(3) The limitation on remedies under para-
graph (1) may be raised at any point in a pro-
ceeding, through the conclusion of the action. If 
raised before January 1, 2006, the court may stay 
the proceeding for a reasonable time, but not later 
than January 1, 2006, to afford the State an oppor-
tunity to waive its immunity as provided in para-
graph (1).’’. 
(c) AMENDMENT TO TRADEMARK LAW.—Section 35 
of the Trademark Act of 1946 (15 U.S.C. 1117) is amend-
ed by adding at the end the following: 
‘‘(e) LIMITATION
ON
REMEDIES
IN
CERTAIN 
CASES.—
‘‘(1) No remedies under this section shall be 
awarded in any civil action arising under this Act 
for a violation of any right of the registrant of a 
mark registered in the Patent and Trademark Office 
on or after January 1, 2004, or any right of the 
owner of a mark first used in commerce on or after 
January 1, 2004, if a State or State instrumentality
is or was at any time the legal or beneficial owner 
of such right, except upon proof that—
‘‘(A) on or before the date the violation 
commenced or January 1, 2006, whichever is 
later, the State has waived its immunity, under 
the eleventh amendment of the United States 
Constitution and under any other doctrine of 
sovereign immunity, from suit in Federal court 
brought against the State or any of its instru-
mentalities, for any infringement of intellectual 
property protected under Federal law; and 
‘‘(B) such waiver was made in accordance 
with the constitution and laws of the State, and 
remains effective. 
‘‘(2) The limitation on remedies under para-
graph (1) shall not apply with respect to a right of 
the registrant or owner of a mark if—
‘‘(A) the limitation would materially and 
adversely affect a legitimate contract-based ex-
pectation in existence before January 1, 2004; 
or 
‘‘(B) the party seeking remedies was a 
bona fide purchaser for value of the right, and, 
at the time of the purchase, did not know and 
was reasonably without cause to believe that a
(C) by redesignating subsection (c) as sub-
section (b). 
SEC. 4. CLARIFICATION OF REMEDIES AVAILABLE FOR 
STATUTORY VIOLATIONS BY STATE OFFICERS 
AND EMPLOYEES. 
In any action against an officer or employee of a 
State or State instrumentality for any violation of any of 
the provisions of title 17 or 35, United States Code, the 
Trademark Act of 1946, or the Plant Variety Protection 
Act (7 U.S.C. 2321 et seq.), remedies shall be available 
against the officer or employee in the same manner and 
to the same extent as such remedies are available in an 
action against a private individual under like cir-
cumstances. Such remedies may include monetary dam-
ages assessed against the officer or employee, declaratory 
and injunctive relief, costs, attorney fees, and destruction 
of infringing articles, as provided under the applicable 
Federal statute. 
SEC. 5. LIABILITY OF STATES FOR CONSTITUTIONAL VIO-
LATIONS INVOLVING INTELLECTUAL PROP-
ERTY. 
(a) DUE PROCESS VIOLATIONS.—Any State or State 
instrumentality that violates any of the exclusive rights of 
a patent owner under title 35, United States Code, of a 
copyright owner, author, or owner of a mask work or origi-
nal design under title 17, United States Code, of an owner 
or registrant of a mark used in commerce or registered 
in the Patent and Trademark Office under the Trademark 
Act of 1946, or of an owner of a protected plant variety 
under the Plant Variety Protection Act (7 U.S.C. 2321 
et seq.), in a manner that deprives any person of property 
in violation of the fourteenth amendment of the United 
States Constitution, shall be liable to the party injured 
in a civil action in Federal court for compensation for the 
harm caused by such violation. 
(b) TAKINGS VIOLATIONS.—
(1) IN GENERAL.—Any State or State instru-
mentality that violates any of the exclusive rights of 
a patent owner under title 35, United States Code, 
of a copyright owner, author, or owner of a mask 
work or original design under title 17, United States 
Code, of an owner or registrant of a mark used in 
commerce or registered in the Patent and Trade-
mark Office under the Trademark Act of 1946, or 
of an owner of a protected plant variety under the 
Plant Variety Protection Act (7 U.S.C. 2321 et 
seq.), in a manner that takes property in violation 
of the fifth and fourteenth amendments of the 
United States Constitution, shall be liable to the
party injured in a civil action in Federal court for 
compensation for the harm caused by such violation. 
(2) EFFECT ON OTHER RELIEF.—Nothing in 
this subsection shall prevent or affect the ability of 
a party to obtain declaratory or injunctive relief 
under section 4 of this Act or otherwise. 
(c) 
COMPENSATION.—Compensation 
under 
sub-
section (a) or (b)—
(1) may include actual damages, profits, statu-
tory damages, interest, costs, expert witness fees, 
and attorney fees, as set forth in the appropriate 
provisions of title 17 or 35, United States Code, the 
Trademark Act of 1946, and the Plant Variety Pro-
tection Act; and 
(2) may not include an award of treble or en-
hanced damages under section 284 of title 35, 
United States Code, section 504(d) of title 17, 
United States Code, section 35(b) of the Trademark 
Act of 1946 (15 U.S.C. 1117 (b)), or section 124(b) 
of the Plant Variety Protection Act (7 U.S.C. 
2564(b)). 
(d) BURDEN OF PROOF.—In any action under sub-
section (a) or (b)—
(1) with respect to any matter that would have 
to be proved if the action were an action for in-
fringement brought under the applicable Federal 
statute, the burden of proof shall be the same as if 
the action were brought under such statute; and 
(2) with respect to all other matters, including 
whether the State provides an adequate remedy for 
any deprivation of property proved by the injured 
party under subsection (a), the burden of proof shall 
be upon the State or State instrumentality. 
(e) EFFECTIVE DATE.—This section shall apply to 
violations that occur on or after the date of enactment 
of this Act. 
SEC. 6. RULES OF CONSTRUCTION. 
(a) JURISDICTION.—The district courts shall have 
original jurisdiction of any action arising under this Act 
under section 1338 of title 28, United States Code. 
(b) BROAD CONSTRUCTION.—This Act shall be con-
strued in favor of a broad protection of intellectual prop-
erty, to the maximum extent permitted by the United 
States Constitution. 
(c) SEVERABILITY.—If any provision of this Act or 
any application of such provision to any person or cir-
cumstance is held to be unconstitutional, the remainder 
of this Act and the application of the provision to any 
other person or circumstance shall not be affected.
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