Letter to the Editor
I attended the panel sponsored by the Federalism & Separation of Powers Practice Group at the 1996 Federalist Society National Lawyers' Convention. The topic was the recent U.S. Supreme Court decision, Seminole Tribe of Florida v. Florida, 116 S. Ct. 1114 (1996), which struck down federal legislation requiring the states to negotiate with Native American tribes regarding gaming on tribal reservations. The Court overturned its prior decision in Pennsylvania v. Union Gas Co., 491 U.S. 1 (1989), and held that Congress has no authority under its Article I powers to abrogate Eleventh Amendment sovereign immunity in order to compel the states to engage in such negotiations. The Court held that Congress may abrogate the states' sovereign immunity only under its Fourteenth Amendment powers.

The decision in Seminole Tribe was the source of much satisfaction among conservatives because it affirms the sovereignty of the states in their relationship to the federal government. Conservatives value our federalist form of government and generally agree that the states are not, and should not become, merely administrative arms of the federal government.

However, it is not enough that the Court interpret our Constitution as protecting states' rights. The Constitution also protects the liberty and property of individual Americans and should be interpreted accordingly. Seminole Tribe fails to do this in the important arena of intellectual property rights. Intellectual property is property entitled to protection under the Constitution. See Stewart v. Abend, 495 U.S. 207, 219 (1990); 2 M. Nimmer & D. Nimmer, Nimmer on Copyright §9.02 (1989); Ruckelshaus v. Monsanto Co., 467 U.S. 986 (1984). The holding in Seminole Tribe removes the right of an individual copyright or trademark owner to bring suit against a state or a state entity, such as a state university, under federal copyright or trademark law in federal court.

In recent years, Congress studied the impact of states' sovereign immunity where copyright and trademark law were concerned. Congress concluded that it was unfair and irrational to allow a state or a state entity to own copyrights and trademarks, and to permit a state to protect them if necessary using the entire arsenal of copyright and trademark protection available under federal law, while simultaneously allowing the state to remain immune from suit from others who claim infringement of their copyright or trademark. See Sen. Rep. No. 305, 101st Cong., 2d Sess. 9 (1989). Congress amended copyright law in 1990 to provide expressly that states would be subject to jurisdiction in the federal courts. 17 U.S.C. §511(a). Congress similarly amended trademark law in 1992. 15 U.S.C. §1122. These amendments noted specifically that the states would not be able to claim sovereign immunity with regard to actions arising under the federal copyright and trademark laws.

Under Seminole Tribe, if these amendments are held by future courts not to have been enacted pursuant to Congress' Fourteenth Amendment authority, an individual copyright owner who resides in a state will be barred from suit in federal court against the state or state university for infringement of his property rights. Whether Congress relied upon its Article I or its Fourteenth Amendment powers in enacting the amendments is not clear from the legislative history. Since federal law provides that federal courts have exclusive jurisdiction over actions for violation of copyright and trademark, this would leave copyright and trademark owners with no forum in which to bring infringement suits against state entities.

Brushing aside the dissent's concerns on this point, the majority noted in a footnote that the protection afforded by the prospective injunctive relief available under the doctrine of Ex Parte Young, 209 U.S. 123 (1908), is still available. See Seminole Tribe, 116 S.Ct. at 1131 n.16. However, such injunctive relief has been determined by Congress to be inadequate. The Senate Report noted: "Injunctive relief for copyright owners does not provide adequate compensation or effective deterrence for copyright infringement. ... Injunctions only prohibit future infringements and cannot provide compensation for violations that already occurred." Sen. Rep. No. 305, supra, at 12.

I myself have seen an example of the arbitrary and unfair effects of this situation. In my view, it has the practical effect of tyranny upon the would-be plaintiff. Conservatives rightly rejoice that in Seminole Tribe, the Court has erected a formidable barrier which protects the states against unconstitutional and illegitimate encroachments of federal power. At the same time, conservatives also must recognize that the Seminole Tribe Court has failed to protect the intellectual property rights of individual Americans or even honestly to acknowledge that failure.

Sara J. Daniels, President, Madison & Western Wisconsin Lawyers Chapter,Federalist Society


2001 The Federalist Society