I
107TH CONGRESS
1ST SESSION
H. R. 3204
To restore Federal remedies for infringements of intellectual property by
States, and for other purposes.
IN THE HOUSE OF REPRESENTATIVES
NOVEMBER 1, 2001
Mr. COBLE (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
2001’’.
(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 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.).
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,
2002, 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, 2004, 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, 2002; 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, 2004,
the court may stay the proceeding for a reasonable time,
but not later than January 1, 2004, 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, 2002, if a State or State
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, 2004, 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, 2002;
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
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, 2004, the court may stay
the proceeding for a reasonable time, but not later
than January 1, 2004, to afford the State an oppor-
tunity to waive its immunity as provided in para-
graph (1).’’.
(d) TECHNICAL AND CONFORMING AMENDMENTS.—
(1) AMENDMENTS TO PATENT LAW.—
(A) IN GENERAL.—Section 296 of title 35,
United States Code, is repealed.
(B) TABLE OF SECTIONS.—The table of
sections for chapter 29 of title 35, United
States Code, is amended by striking the item
relating to section 296.
(2) AMENDMENTS TO COPYRIGHT LAW.—
(A) IN GENERAL.—Section 511 of title 17,
United States Code, is repealed.
(B) TABLE OF SECTIONS.—The table of
sections for chapter 5 of title 17, United States
Code, is amended by striking the item relating
to section 511.
(3) AMENDMENTS TO TRADEMARK LAW.—Sec-
tion 40 of the Trademark Act of 1946 (15 U.S.C.
1122) is amended—
(A) by striking subsection (b);
(B) in subsection (c), by striking ‘‘or (b)’’
after ‘‘subsection (a)’’; and
(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)), and 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.