March 2004


Suppose that a library in a state-supported institution or organization infringes copyright.  Is there a reason to bar copyright owners from suing for damages because of the status of the library? Traditionally state governments and entities enjoyed sovereign immunity from some types of suits under the Eleventh Amendment to the U.S. Constitution.  In 1990 the Copyright Act was amended by section 511(a), in response to infringement claims by software producers against state-supported universities that had reproduced copies of software for computer labs on their campuses.  The statute eliminated sovereign immunity for States, instrumentalities of a State and State officials and employees and stated that they were no longer immune from suit for copyright infringement.  The Patent Act was similarly amended in 1992 to eliminate sovereign immunity from patent suits.[1]   Municipal and county entities traditionally do not enjoy sovereign immunity, so they were not mentioned in either statute. 

Through a series of decisions since 1999, the U.S. Supreme Court has restored the vitality of Eleventh Amendment immunity for intellectual property claims.  Sovereign immunity may appear to be an esoteric legal issue for copyright, and to some extent it is, however, it may have significant impact on copyright owners as well as many of the special subject libraries that are a part of state-supported educational institutions, museums and archives.  The recent revitalization of Eleventh Amendment immunity relates to states’ rights.  In Florida Prepaid Postsecondary Expense Board v. College Savings Bank,[2] the Supreme Court held that the 1992 amendment to the Patent Act which permitted state entities to be sued for damages in patent infringement was barred by Eleventh Amendment immunity.[3]  One of the grounds for this holding was that Congress had no evidence that such entities had been infringing patents when it amended the statute.

The same is not true for copyrights.    In fact, quite the opposite:  section 511 was enacted in response to claims of copyright infringement by state universities.  So, does Eleventh Amendment immunity cover copyright?  It appears that it does.  The 5th Circuit Court of Appeals had addressed the issue in Chavez v. Artes Publico Press[4] four years before Florida Prepaid, and a long series of appeals and vacated judgments followed.  The 5th Circuit ultimately dismissed the case on the basis of Florida Prepaid because the Copyright Remedy Clarification Act was an improper exercise of Congressional legislative power in violation of the Eleventh Amendment.  So, it appears that state entities are immune from suits for copyright damages.  Thus, privately supported institutions are likely at greater risk for copyright infringement suits since copyright holders are less likely to commit the resources to sue a state entity and risk dismissal of the suit because of sovereign immunity than to sue a private institution or corporation. State agencies are not totally immune from copyright or patent suits, however;  they still may be sued for an injunction.  Also, individual employees are not immune from suits for damages, even when they are acting in an official capacity when the infringement occurred.

 Then there is the bad publicity factor.  Even if state agencies enjoy sovereign immunity from suits for copyright damages, it would still be very embarrassing to the agency or institution to be named as a defendant in a suit for an injunction.  In fact, it would be a public relations nightmare for the institution. 

For the past few years, Congress has tried to find a way to mend this problem so that for state agencies and institutions that infringe copyrights are treated the same as other infringing entities and may be sued for damages in copyright.  For example, it might be possible to require a state agency, such as a university, to agree to a quid pro quo concerning intellectual property rights.  If the University of North Carolina wanted to hold patent rights in inventions by its faculty members, which it definitely does, and be able to sue infringers for infringement of its intellectual property, the exchange would require UNC to submit itself to suits and thus opt out of Eleventh Amendment immunity.

The latest bill was Senate bill 107-1611 and its companion House bill 107-3204, the Intellectual Property Protection Restoration Act (IPPRA).  It would condition a state’s own ability to recover damages in intellectual property suits on its waiver of immunity from private suits against it.  This would put states on equal footing with private parties with respect to suits for damages since a state would be entitled to no damages for infringement of its own intellectual property rights unless it waived its Eleventh Amendment immunity.  States would have only two years to waive their immunity.  Non-waiving states that sued private parties for infringement would be ineligible for monetary damages that would otherwise be available under federal law.

This bill was totally unacceptable to states, because the waiver applied to the entire state and not just to the institution that wished to enforce its own intellectual property rights.  So, if the University of North Carolina wanted to waive its sovereign immunity in order to be able to sue for infringement of its intellectual property, the waiver would apply to all North Carolina state agencies and not just to the University.  This is an impossible standard since the North Carolina Department of Corrections, Department of Transportation, etc., could care less whether the University holds patents and copyrights.  The agencies do care if their Eleventh Amendment immunity is waived across the board, however.   A more acceptable bill would allow the University of North Carolina to waive only its rights. 

It is likely that Congress will continue to try to find a solution to what copyright holders see as a significant problem.  Basic fairness dictates that states be treated the same as other entities and be responsible for compensating copyright holders when they infringe the copyright rights of a private entity.




[1]           35 U.S.C. § 296(a) (2000).

[2]           527 U.S. 666 (1999).

[3]           The case also covered trademarks.

[4]           59 F.3d 539 (5th Cir. 1995).