Washington and Lee Law Review, Vol. 55, No. 3 (Summer 1998), pp. 849-914


Part I of this Article addresses relief available to intellectual property owners under the Takings Clause of the Fifth Amendment. Before Congress's express abrogation of state sovereign immunity in 1992, federal, state, and local governments were nonetheless potentially liable for misappropriations of intellectual property that constituted takings without just compensation. This examination of the Supreme Court's Fifth Amendment jurisprudence is also key to answering the critical question of whether federal patent, copyright, and trademark laws establish rights in “property” for the purposes of the Fourteenth Amendment, for only under section 5 of the Fourteenth Amendment may Congress abrogate a state's Eleventh Amendment immunity. Intellectual property owners, not surprisingly, were dissatisfied with the rather limited restitutionary nature of the states' Fifth Amendment liability. In 1992, these owners convinced Congress to make the broader remedies found in federal intellectual property laws applicable against the states. Part II addresses whether the Court's decision in Seminole Tribe that Congress cannot abrogate a state's Eleventh Amendment immunity pursuant to any of its Article I powers renders the 1992 abrogating legislation unconstitutional. The question is of vital interest to owners of federal intellectual property because unlike the remedy for a takings claim, a valid claim for patent, copyright, trademark infringement, or false advertising carries with it the presumption of injunctive relief and the possibility of monetary damages beyond mere restitution. Moreover, litigating under these statutes affords the plaintiff the subtle but potentially decisive advantage of access to a federal forum for his federal claims. After analyzing the Court's recent clarifying opinion in City of Boerne v. Flores, we conclude that Congress properly exercised its power under section 5 of the Fourteenth Amendment to render states liable in federal court for patent, copyright, and trademark infringement, but probably not for false advertising claims. Even if the Court disagrees and strikes down the abrogating statutes, we conclude that principles of sovereign immunity probably would not prevent the successful pursuit of a remedy for the violation of a federal statute in state court. In Part III, we discuss how the liability landscape differs when the defendant is a state official or a local government being sued for a statutory or constitutional violation under the federal intellectual property statutes or under 42 U.S.C. § 1983. When a local government has taken property pursuant to an “official policy,” the plaintiff may be obliged to pursue an inverse condemnation suit in state court in lieu of, or at least before, bringing a federal suit under § 1983. When an officer acts outside the “official policy” of a local government, a federal § 1983 suit is appropriate, and both damages and prospective relief will often be available. Because suits over government intrusions on intellectual property rights may be brought under federal statutory and constitutional law and state condemnation law, and in both federal and state courts, the need arises to coordinate the work of the two judicial systems. Part IV identifies and addresses these jurisdictional issues.