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
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,
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
Sara J. Daniels, President, Madison & Western Wisconsin Lawyers