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Overcoming immunity: the case of federal regulation of intellectual property.

The Supreme Court's decisions in Seminole Tribe v. Florida and Alden v. Maine have recognized a broad state sovereign immunity that Congress lacks power simply to override. In practice, the principal result of these decisions is to disempower Congress, when legislating under Article I of the Constitution, from subjecting an unconsenting state to damages liability in suits brought by private parties.

This Article examines the importance of the constitutional foreclosure of that remedy, and the options open to Congress should it wish to compensate for the unavailability of that remedy by providing other means to deter and redress violations by states of federal intellectual property rights. The analysis focuses on the federal intellectual property statutes because the Court has already declared two of these statutes to be unconstitutional incursions upon state sovereign immunity, and because, in response to those decisions, the executive and legislative branches have begun to explore legislative alternatives. Most of this article's analysis is equally applicable, however, to other statutory schemes that Congress has enacted, or might enact, under its Article I powers.

Four principal strategies are examined: (1) creation of a narrow cause of action for those violations by states that can also be viewed as deprivations of property without due process; (2) reliance upon suits against responsible state officials for damages to be paid by them personally; (3) authorization of the United States to sue the states for damages, coupled with a mechanism for enlisting private initiative on behalf of the United States; and (4) conditioning the conferral to the states of federal benefits upon the states' waiver of immunity from suit. In general, each of these four approaches raises an intersecting set of practical and legal difficulties; none provides a surefire and easy alternative to the remedy precluded by the Court's decisions. In that respect, the analysis suggests that the Court's state sovereign immunity doctrine, although viewed by some as being of secondary importance (because it does not preclude .federal regulation of the states altogether but merely restricts the available remedies), is in fact a matter of considerable constitutional and practical importance.

INTRODUCTION

There are many angles of vision on the Supreme Court's recent decisions concerning state sovereign immunity and federalism more generally. In two previous articles,(1) I have set forth my views--largely critical ones--of the Court's decisions in Seminole Tribe v. Florida(2) Alden v. Maine,(3) and Florida Prepaid Postsecondary Education Expense Board v. College Savings Bank.(4) I will not repeat those arguments here, but rather will start from a point I have previously made.

That starting point addresses the question of how important these decisions are in practice. Dean Sullivan noted, not long after Alden and Florida Prepaid were handed down, that they "were not about whether Congress may regulate the states in these areas but rather how it may enforce such regulation."(5) For some, including Dean Sullivan, the implication of that observation seems to be that the latter question is of greatly subordinate importance.(6) And there is no doubt that the current curious state of affairs--in which Congress may regulate states under its Article I powers, but is barred by the doctrine of sovereign immunity from important enforcement techniques--is a less serious restriction of national power than a regime--like that briefly ushered in by National League of Cities v. Usery(7)--in which Congress may not regulate states at all.

But perhaps because I teach federal courts rather than the standard constitutional law course, I am predisposed to think that a central problem of constitutional law is the "creation of a machinery of jurisdiction and remedies that can transform rights proclaimed on paper into practical protections."(8) Thus, to me, a limitation on available remedies that is superimposed on all exercises of legislative power under Article I is hardly of less significance than, for example, a decision like United States v. Lopez(9) that limits congressional power altogether, but over a rather narrow range of potential federal regulation. The significance of state sovereign immunity depends heavily upon what remedies it leaves open--both extant remedies and other remedies that Congress has not yet created but has power to afford. Recently, in conjunction with inquiries organized by both the executive and the legislative branches,(10) I have had the chance to dig into the question of just how Congress might seek to close the remedial gap created by state sovereign immunity with regard to one important set of federal laws--those creating and regulating intellectual property. The Supreme Court's enthusiastic embrace of the doctrine of state sovereign immunity crossed paths with the law of intellectual property in 1999 in Florida Prepaid Postsecondary Education Expense Board v. College Savings Bank.(11) In that case, the Court held unconstitutional a congressional enactment that had purported to make states, like other actors, liable for damages when they are sued by private parties for an infringement of patent rights. Congressional efforts to subject the states to private damage actions for copyright or trademark infringement(12) must, under the reasoning of Florida Prepaid, be deemed to be equally invalid.(13)

Thus, I wish here to explore the import of these rulings in general and, more particularly, where they leave the system for enforcing intellectual property rights against the states--what remedial gaps exist, and what opportunities are open to Congress should it wish to close those gaps. Although I focus here on intellectual property regulation, must of the discussion applies generally to other schemes of federal regulation enacted under Congress's Article I powers.

I. THE REMEDIES THAT REMAIN

Imagine that, today, various faculty members and administrators in different departments of a state university are engaged in widespread illegal duplication of copyrighted materials. What remedies are available to the copyright holders?

First, the Supreme Court's cases leave intact prospective injunctive remedies against state action that infringes intellectual property rights.(14) A certain form must be observed--the suit must be filed against a state official, rather than against the state or an agency of the state--and, needless to say, injunctive relief must be authorized by federal law and otherwise appropriate (as, for example, in the case of ongoing violations). But so long as the proper form is observed, the venerable decision in Ex parte Young(15) holds that sovereign immunity does not bar a prospective injunction. (What has been said about injunctions is generally applicable to declaratory judgments; in both cases, so long as the relief sought against a state official is prospective in nature, sovereign immunity does not pose a barrier.)(16) Thus, if and when the copyright holders discover that their rights are being violated, bring suit, and obtain an injunctive order, the illegal practice will presumably halt.(17)

The constitutional difficulties arise when the holder of an intellectual property right seeks to recover damages for infringement that has already taken place. Suppose that the infringement had been going on for many years before any injunctive order was obtained. What the Florida Prepaid case held was that the plaintiff may not sue the state for damages--no matter how flagrant the violation, and no matter how clearly and insistently Congress has sought to authorize such relief.

In our example, this holding would not necessarily mean that no avenue exists by which the copyright holders may obtain compensation for the harm suffered. But the only recourse available under existing law is to sue the responsible state officials for damages to be paid out of their personal resources,(18) Such awards are not barred by the principle of sovereign immunity, since, unlike damage awards against the state treasury, they are thought not to affect the state directly.(19) But as is developed further below, suits against officials raise a whole set of legal and practical problems that may make them a far less satisfactory option than recovering against the state itself.

Thus, imagine that it is well known at our hypothetical state university that many professors and administrators are illegally reproducing materials. If the university did face damages liability for the acts of its staff, it might itself implement policies to bring such violations to a halt and to prevent new ones. But the incentive to take such action, given the state of current law, is considerably weaker: unless and until an injunction is issued, the university as an entity faces no risk of liability.

In pointing to existing remedial gaps, I do not mean to suggest that states and their officials will necessarily take advantage of them. I doubt that state officials generally act like Justice Holmes' bad man,(20) motivated only by the fear of legal sanctions. "[R]outine rule-following, respect for the law, and desire to avoid the burdens of litigation often will induce compliance with federal duties."(21) If this much is correct, it may be easy to be excessively alarmist about the current state of affairs.

However, in some instance the factors just noted may operate weakly. Professor Menell notes that university research laboratories, for example, may exhibit a competitiveness that makes them likely to press at, if not beyond, the legal margins;(22) where that is so, the threat of entity liability could be an important enforcement tool in the public as in the private sector.(23) Among the situations where entity liability may be of particular importance are those in which the scope of federal duties is uncertain or the cost of compliance is very high; in such cases, the prospect of liability for non-compliance may induce greater care in considering whether federal law truly permits the conduct in question.(24) Thus, I would not go nearly so far as Professor Jeffries, who says that in view of other remedies, "the Eleventh Amendment almost never matters."(25)

Indeed, any effort to assess the importance, in practice, of retrospective governmental liability seems to me to raise a number of empirical questions to which I do not pretend to have answers. One set of questions has to do with the operation of other remedies--in particular remedies against individual officers, coupled with the likely prospect of state indemnification. I discuss below some of the issues raised by the familiar argument that individual liability coupled with indemnification is a good substitute for governmental liability.(26)

A second set of questions pertains to the extent to which retrospective governmental liability, if permitted, would promote greater compliance with the law. Some have questioned the conventional assumption that retrospective governmental liability will help to promote compliance with legal norms. Professor Levinson has offered an elaborate analysis to that effect, based on theoretical explanations of the motivations of government actors.(27) Levinson also questions the force of claims for compensation by persons injured by official action. A different basis for skepticism is found in Professor Hills' contribution to this Symposium, arguing that the realities of state budgeting cast doubt on the view that damage judgments (as distinguished from injunctions) cause program administrators to internalize the costs of legal violations.(28) I am not fully persuaded by either account, but both point to the need for careful analysis of government practice in seeking to ascertain the importance, in different contexts, of retrospective governmental liability.

A final, and very broad, question concerns the kinds of incentives that officials have for complying with legal norms quite apart from the risk of being subjected to particular remedies. As already suggested, my guess is that the answer to that question in a particular context depends upon a complex interaction of many factors, including: (a) the bureaucratic culture and reward structure in the particular state agency; (b) the particular federal legal norms at issue (Do officials believe that the federal intellectual property laws merit observance? Always? Even when they preclude downloading copyrighted material from the Internet?);(29) (c) the extent of knowledge of the legal norms; (d) the advantages that might come from engaging in conduct known to violate, or possibly to violate, federal law, together with the risk of detection; (e) the reputational costs of being found to have violated a particular legal norm;(30) and (f) the extent that budgetary pressures give rise to pressure to cut corners.

I acknowledge that an exploration of these questions may lead to the conclusion that at least in some contexts, retrospective damages liability is a less important remedy than some critics of the Supreme Court have suggested. Insofar as that conclusion proves to be correct, however, I would not view it as a strong defense of the Supreme Court's decisions foreclosing that remedy as a matter of constitutional law. Quite apart from the fact that the Court has barely analyzed this set of questions,(31) the key point is that it is for Congress, not the Court, to make these rather complicated, fact-based, and context-specific judgments about when retrospective governmental liability is a desirable or an important remedy. To be sure, Congress may, if left unconstrained by the Court's Eleventh Amendment doctrine, impose liability on governments in particular areas or respects that would strike some observers as overly broad. From a policy perspective, that is to be lamented; from a constitutional perspective, that is the democratic process at work.

I might add a word in light of an interesting perspective that Professor Volokh has offered.(32) Noting criticism of the Supreme Court for leaving victims of state infringement less well protected than are victims of private infringement, Volokh responds that one might instead compare infringement by states to infringement by the federal government. If a federal agency or official infringes a copyright or patent, the injured party may not obtain important remedies that are available against private infringers--notably, an injunction, treble damages for willful patent infringement, or meaningful statutory damages for copyright infringements.(33) Relief is limited, instead, to a suit for actual damages in the Court of Claims. This comparison, he contends, undercuts any argument "that it's somehow shocking and highly impractical for states to be allowed to do the same thing."(34)

Volokh means to limit his point to being a response to "pragmatic or moral" criticisms of Florida Prepaid, rather than to structural, doctrinal, or textual criticism.(35) But his response to the pragmatic argument strikes me as less convincing than he finds it to be.

To begin with, it is not clear that the available remedies against state infringement are as robust as those against the federal government. Damages against the government, which are permitted when the United States infringes but not when the states do, might be thought to be the remedy of primary importance. Injunctions, which are permitted against state but not federal officials, are beside the point for completed violations, provide little deterrence for "bad men," and cannot in any event provide compensation.

But a more general objection to Volokh's argument extends beyond evaluating the relative potency of existing remedies against state and federal infringements. While I do not know the relative extent to which federal and state governments infringe intellectual property rights, I can well imagine Congress making the pragmatic judgment that (a) federal infringements may be less likely due to differences in allegiance, bureaucratic structure, or other factors; (b) federal infringements may be less likely to escape attention than are actions spread across the fifty states; (c) Congress has various means of formal and informal oversight over federal agencies that may provide an effective limitation upon any temptation to infringe; and (d) should these judgments prove erroneous, Congress remains free to strengthen enforcement against federal agencies.

This last point in some ways frames the issue most sharply--and suggests that the constitutional issues may be less distinct from the pragmatic and moral ones than Volokh suggests. Were Congress to decide that state infringement is a serious problem, it could not simply exercise its Article I powers to redress the issue. It is even possible that that lack of power may in turn create a feedback loop with regard to the likely level of compliance in the first instance. It is also relevant to the "moral" judgment that "[c]opyright protection ... is not available for any work of the United States Government";(36) to the extent that states benefit from ownership of intellectual property rights more broadly than does the United States, it may also be appropriate that they are subject to stricter enforcement when they infringe those same rights.(37)

Thus, the moral and pragmatic comparison of federal and the state governments seems to me far more complicated than Volokh suggests.(38) At this point, those considerations and the constitutional questions merge if one believes, as I do, that what is of paramount importance is not that at any given time the federal and state governments be subject to identical sets of remedies, but rather that Congress have the power to make reasonable choices, that may shift over time, about just what panoply of remedies it wishes to make available against various classes of defendants. To be sure, Volokh might retort that if the federal government is free from suit unless it waives immunity, so too a state should be free from suit unless the state (rather than Congress) waives immunity. But the symmetry breaks down in face of the Supremacy Clause and basic constitutional principles: Congress may (at least so long as Garcia(39) remains good law) impose unwanted regulation on the states, whereas the states may not impose unwanted liability on the United States. There is, moreover, a reason for the asymmetry, as all of the people are represented in the national political branches but not in the political branches of any particular state.(40)

II. POSSIBLE CONGRESSIONAL APPROACHES

If Congress wished to strengthen the remedies against infringement of intellectual property (IP) rights by state governments, how might it do so? Before exploring the available techniques, two introductory comments are in order.

The first follows from the discussion of Professor Volokh's argument. Though in the end I find Volokh's approach comparison unconvincing, I cannot gainsay the possibility that the limits on the liability of the United States might contribute to the Supreme Court's skepticism about the importance of making state governments more fully liable in damages--which in turn could weaken the case for upholding any techniques thought to be constitutionally questionable.

Second, commentators have suggested that the Supreme Court's federalism and sovereign immunity decisions exhibit a disregard if not contempt for Congress, and an associated skepticism about legislative measures that the Court perceives to be an "end run" around sovereign immunity.(41) Some of the suggestions that follow might plausibly be viewed as falling into the end-run category, even though amply supported by precedent. Approaches that appear to be valid under existing law might, if tested before the Supreme Court, result in still further contractions of congressional power by the Court's current majority. I claim no powers of prophesy in this regard, only an awareness that the jurisprudence of constitutional federalism may not be a model of stability.

With that introduction, let me proceed to investigate possible approaches that Congress might take.

A. Enact a Narrow Cause of Action under Section Five of the Fourteenth Amendment

One route that Congress might take would partially, but only partially, fill the remedial gap that I have just identified. To explain this approach, some greater attention must be paid to the reasoning of the Supreme Court's 1999 decision in the Florida Prepaid case.(42)

The Court there invalidated the "Patent and Plant Variety Protection Remedy Clarification Act"--or, for short, the Patent Remedy Act--which Congress had enacted in 1992.(43) That Act had purported to abrogate the states' sovereign immunity from suit for patent infringement, and thus to authorize federal court jurisdiction over private damage actions against the states for patent infringement. But four years later, in 1996, the Supreme Court, in the Seminole Tribe decision,(44) had made clear its view that Congress lacks power to abrogate state sovereign immunity when legislating under its Article I powers--its power, for example, to create a system of patent or copyright protection or to regulate interstate commerce. However, the Court in Seminole Tribe did not disturb a line of authority holding that Congress does possess the power to abrogate state sovereign immunity when legislating under Section 5 of the Fourteenth Amendment.(45) Thus, when in the Florida Prepaid case the Court confronted the question whether the Patent Remedy Act was constitutional, the answer turned on whether that Act could be viewed as a measure that provided a remedy for deprivations of property without due process, and thus constituted a valid exercise of legislative authority under Section 5.

To resolve the matter under the approach it had followed in City of Boerne v. Flores,(46) the Court in Florida Prepaid began by considering the scope of the constitutional violations that the Patent Remedy Act could be understood to redress, and then asked whether the Act could be viewed as a congruent and proportional remedy for those violations.(47) The majority answered that question in the negative, advancing two reasons why a state that infringes a private patent has not necessarily deprived the patent holder of property without due process--and why, therefore, the Patent Remedy Act exceeded the scope of congressional power under Section 5 to pass legislation to enforce the Fourteenth Amendment.

First, the Court doubted that all patent infringements constitute deprivations within the meaning of the Due Process Clause. Writing for the Court, Chief Justice Rehnquist contrasted the Supreme Court's ruling in Daniels v. Williams(48)--which held that merely negligent action of state officials does not give rise to a deprivation within the meaning of the Due Process Clause--with the Patent Remedy Act, which authorizes infringement actions against the states even where the infringement was entirely inadvertent.(49) The first defect, then, was that the Patent Remedy Act lacked a scienter requirement that the Due Process Clause has been held to contain.

The Court's second reason for finding the Patent Remedy Act to be overbroad--to create sanctions for state actions that do not necessarily violate the Due Process Clause--is more technical and complicated. In a line of cases from Parratt v. Taylor(50) to Zinermon v. Burch,(51) the Supreme Court has ruled that if a deprivation of liberty or property is random and unauthorized, at least in some circumstances the only process due is a meaningful post-deprivation remedy (for example, a tort action against the state). Invoking this doctrine in the Florida Prepaid decision, the Court held that even were a state intentionally to infringe a patent, that conduct would not necessarily constitute a deprivation without due process; the patent-holder's procedural due process rights would be violated only if the state failed to provide an adequate post-deprivation remedy.(52) In view of this doctrine, the Court ruled in Florida Prepaid that the Patent Remedy Act, by authorizing a federal patent infringement remedy without regard to the existence of an adequate state post-deprivation remedy, extends to circumstances in which the state's infringement of a patent does not violate the Fourteenth Amendment.

Much could be said about both of these aspects of the Court's reasoning.(53) For present purposes, the critical point is that the decision would seem to permit Congress to legislate under Section 5 of the Fourteenth Amendment by enacting a more narrowly drawn statute that regulates only conduct that is itself unconstitutional. Congress could create a cause of action against states that intentionally deprive individuals of intellectual property rights in situations in which the state does not afford an adequate post-deprivation remedy--and provide that plaintiffs with a valid claim are entitled to recover damages from the state treasury.(54) With such a statute in place, at least when a state, through its agents, has "intentionally" infringed intellectual property rights, the injured party would always have one of two options: (a) to sue the state or state officials(55) in state court under the state's "adequate" post-deprivation remedy, or (b) where no such remedy exists, to establish a constitutional violation and thus bring a federal court action against the state itself under the narrowly drawn statute I suggest.(56)

Such an approach raises two principal questions. The first is whether it would survive constitutional scrutiny; the second is how efficacious such a statute would be.

1. Constitutionality.

Whether such a statute would be constitutional depends upon one's reading of Florida Prepaid and other recent Supreme Court decisions that have found that various federal statutes extend beyond the scope of Congress's legislative power under Section 5 of the Fourteenth Amendment?(57) Each of these decisions has noted, as a central part of its reasoning, an absence of a record of widespread constitutional violations by the states in the area under regulation, and thus an inadequate predicate for congressional action under Section 5.(58) Does the constitutionality of the measure I have just described depend on a showing that states are, at present, engaged in widespread deprivations of intellectual property without due process?

I do not read these recent decisions as holding that any exercise of Section 5 power is valid only upon such a showing of widespread violations; that showing is demanded, rather, only when the congressional measure reaches broadly to regulate conduct that is not independently unconstitutional. For in each of the cases in which the Supreme Court has found a federal statute regulating the states to fall beyond the scope of Section 5 power, the enactment regulated at least some conduct that itself did not violate Section 1 of the Fourteenth Amendment. Thus, in Florida Prepaid, for example, the Court found that the statute--by regulating patent infringement that was unintentional, and whether or not state post-deprivation remedies were available--regulated conduct that did not itself constitute a deprivation of due process. Where Congress does reach beyond regulating actual constitutional violations, these recent decisions clearly require a strong showing of legislative need. Thus, while the Court continues to recognize that in some instances Section 5 does permit Congress to regulate conduct that is not itself unconstitutional, as a means of preventing or remedying constitutional violations, it has insisted that "`[t]here must be a congruence and proportionality between the [constitutional] injury to be prevented or remedied and the means adopted to that end. Lacking such a connection, legislation may become substantive in operation and effect.'"(59) And in the course of determining whether that test of congruence and proportionality has been satisfied, the Court has inquired whether there was a pattern of constitutional violations by the state that would be redressed by the statute in question.(60)

By contrast, the proposed legislative measure just discussed would be tailored so that it, unlike the statutes recently invalidated by the Court, extends only to instances of constitutional violations. Such a measure is more easily viewed as "remedial," and in my view the validity of a statute that merely regulates unconstitutional conduct itself should not require an additional showing of widespread violations by the states. Examination of the record of state violations is significant only when a statute reaches well beyond the scope of constitutional violations?(61)

To make this concrete, imagine that Congress were to enact a statute making it a federal crime for a person acting under color of state law to participate in a lynching (which I take to be an obvious denial of due process). I do not think that a sheriff charged under such a law should be able to defend on the ground that (a) lynching is not widespread and persistent, and thus (b) the law that criminalizes such egregious and obviously unconstitutional conduct is nonetheless unconstitutional itself because too "few" such lynchings occur.

Indeed, if one returns to the City of Boerne decision, it is striking there that Congress attempted, in enacting the Religious Freedom Restoration Act of 1993 (RFRA),(62) to impose by statute a substantive standard that the Supreme Court had rejected as a matter of constitutional law. Indeed, the City of Boerne opinion cites to Marbury v. Madison(63) no fewer than four times, as if to stress the Court's role in interpreting the Constitution and the inappropriateness of Congress's having enacted a statute resting on a competing constitutional understanding. It was in that context that the Court in City of Boerne said that "[t]here must be a congruence and proportionality between the injury to be prevented or remedied and the means adopted to that end. Lacking such a connection, legislation may become substantive in operation and effect."(64) But the proposed criminalization of lynching would not change the substance of due process or embrace a constitutional understanding different from that of the Supreme Court. All agree that lynching denies due process whether or not a federal statute criminalizing such conduct were enacted.

This reading of the Supreme Court's jurisprudence under Section 5 appears consistent with the reasoning of the Court's decision in Kimel v. Florida Board of Regents?(65) There, the Court held unconstitutional Congress' effort to subject the states to liability under the Age Discrimination in Employment Act (ADEA). In Kimel, after first opining that age discrimination rarely if ever is itself a violation of the Fourteenth Amendment, the Court added:
   That the ADEA prohibits very little conduct likely to be held
   unconstitutional, while significant, does not alone provide the answer to
   our [sections] 5 inquiry. Difficult and intractable problems often require
   powerful remedies, and we have never held that [sections] 5 precludes
   Congress from enacting reasonably prophylactic legislation. Our task is to
   determine whether the ADEA is in fact just such an appropriate remedy or,
   instead, merely an attempt to substantively redefine the States' legal
   obligations with respect to age discrimination. One means by which we have
   made such a determination in the past is by examining the legislative
   record containing the reasons for Congress' action....

   Our examination of the ADEA's legislative record confirms that Congress's
   1974 extension of the Act to the States was an unwarranted response to a
   perhaps inconsequential problem. Congress never identified any pattern of
   age discrimination by the States, much less any discrimination whatsoever
   that rose to the level of constitutional violation.(66)


This reading is consistent, also, with the venerable case of Home Telephone & Telegraph Co. v. City of Los Angeles.(67) That case held that a violation of Section 1 of the Fourteenth Amendment is established whether or not the action was authorized and whether or not the state was itself prepared to redress the illegal conduct. In essence, Home Telephone ruled that state action need not be persistent, widespread, customary, authorized, or unredressable under state law in order to violate Section 1 of the Fourteenth Amendment. And then half a century later, in Monroe v. Pape,(68) the Court extended that approach in its interpretation of 42 U.S.C. [sections] 1983, a statute enacted at least in part under Section 5 of the Fourteenth Amendment. There, the Court rejected the argument that Section 1983 should be interpreted to require proof that unconstitutional conduct was authorized or part of a custom or practice. Indeed, the statute was read to extend to any constitutional violation--even, as Justice Frankfurter protested in dissenting from this ruling, to "isolated acts of abuse of authority by state officers"(69) that were "in defiance of state law and which no settled state practice, no systematic pattern of official action or inaction, no `custom, or usage, of any State,' insulates

from effective and adequate reparation by the State's authorities."(70) But if City of Boerne and subsequent cases are now read to permit enactment of Section 1983, or other statutes, only where there is proof of widespread violations, then in every Section 1983 suit the Constitution would demand proof that the violations of which the plaintiff complained were widespread--exactly the pattern whose proof the Court, over Justice Frankfurter's dissent, did not demand. I see nothing in these recent cases to suggest that the Court now understands the Constitution to demand that Monroe v. Pape be overruled.(71)

No doubt, when Section 1983 was enacted, violations of federal rights were widespread. Yet to make the validity of Section 1983 turn on whether violations are widespread would lead to some odd constitutional results. For what happens if and when constitutional violations are no longer widespread? One possibility is that a statute like Section 1983, fully constitutional when enacted, would become unconstitutional--perhaps as the consequence of its own efficacy. The result--that a statute remains valid only for so long as it is regularly defied--is surely an odd one. (It brings to mind the story of the inhabitants of a mountain village removing a sign warning of a dangerous curve because no one had recently driven off the road.) Equally odd is a different possibility--that the statute remains constitutional because there were widespread and persistent problems in the past. On that view, had the identical statute been passed years later, after the constitutional problems were less widespread, the same measure would be unconstitutional--thus making a statute's constitutionality at present depend on the date of its enactment.(72)

Thus, I believe that under a proper reading of the Court's Section 5 jurisprudence, a limited measure, providing redress only for intentional deprivations where no adequate state remedy is afforded, would pass constitutional muster. I concede, however, that the Court's jurisprudence can be read to constrict congressional power under Section 5 more severely,(73) that the Court may construe purported exercises of authority under Section 5 particularly narrowly when Congress seeks to abrogate state sovereign immunity, and that the Court, indeed, may no longer be fully committed to abrogation under Section 5 of the Fourteenth Amendment?(74) In any event, it surely would be advisable for Congress to assemble the most complete record possible of instances in which state governments have violated federal intellectual property laws and, beyond that, of instances in which those violations appear also to constitute violations of the Due Process Clause.

2. Efficacy.

Even if the approach sketched above is deemed constitutional, a second question arises: How effective would the relief afforded to intellectual property holders be under such a regime? Relief is restricted in two ways. First, federal relief is assured only in cases in which the infringement was deemed intentional. I do not know the terrain of intellectual property rights and governmental infringement thereof well enough to hazard a guess about what proportion of all infringements is "intentional,"(75) or whether such a restriction would lead to an increase in unintentional infringements. Some commentators believe that, at least as to certain kinds of disputes, infringements are likely to be unintentional.(76) Moreover, the meaning of "intentional" may not be clear. If state officials know that they are photocopying copyrighted work but believe, erroneously, that the photocopying constitutes fair use, is that action intentional (because they surely intend the conduct and know that they lack permission from the copyright holder) or unintentional (because they do not know that the conduct is illegal)?(77) I find the former, broader view of intentional far more appealing. Indeed, in the Daniels case itself,(78) the Court seemed to be requiring only that the defendant, a prison official, have intended to cause harm by having left a pillow on a staircase; the Court did not appear to suggest that the Due Process Clause would also require a showing that the official knew that intentionally causing harm was a deprivation of liberty within the meaning of the Fourteenth Amendment.(79) But the Supreme Court's decisions do not clearly answer the question of just what "intentional" means in this context.(80)

Even when the limitation to intentional conduct would not create an obstacle to recovery, two important questions remain: how likely it is that an individual whose intellectual property has been infringed by the state would end up in state court, and if that should occur, how adequate are state court remedies in practice. It would require careful inquiry to determine the extent to which the states today have causes of action that would provide damages for the deprivation of intellectual property rights(81)--despite a regime of federal law that has been understood both to preempt state protection for intellectual property rights(82) and to preclude the exercise of state court jurisdiction for suits arising under the patent and copyright laws.(83) Of course, congressional enactment of a statute providing federal relief only when state remedies were inadequate might lead some states to create a new remedy so as to move themselves outside the reach of the federal statute.

Moreover, it is far from clear just how robust a remedy must be for it to count as "adequate" or "meaningful" within the meaning of the Parratt/Zinermon line of cases. We do know that adequacy is a constitutional standard and the Constitution does not require redress that is as generous as that provided by 42 U.S.C. [sections] 1983(84)--or, for that matter, as that provided by the existing federal intellectual property regimes. Courts have tended to treat state remedies as adequate if they provide the opportunity for a hearing by a tribunal with authority to provide redress.(85) More specifically, remedies can be adequate even if, unlike the federal intellectual property laws, they provide no punitive damages(86) or attorney's fees?(87) Moreover, a state remedy is evidently not inadequate merely because it confers some immunities on the defendants, at least if the immunities are no broader than the immunities recognized in constitutional tort actions under 42 U.S.C. [sections] 1983.(88) The harder question, to which there is not a clear answer, is whether state remedies are inadequate if they recognize immunities that are significantly broader than those available in Section 1983 actions. Some courts have upheld state remedies as adequate even when immunity doctrines seem to bar any prospect of monetary recovery from either the government or its officials;(89) other courts disagree.(90) Were the Supreme Court to take the former view, one can imagine that states might react to the federal statutes I have outlined by enacting limited post-deprivation remedies so as to confine litigation to their courts under a more restrictive remedial regime.

Quite apart from the adequacy of remedies, the likely consequences of this approach raise nonconstitutional, but important, questions of policy concerning the appropriate allocation of authority between the federal and state courts. Copyright and patent (but not trademark) regulation are among the relatively few areas in which federal subject matter jurisdiction is exclusive,(91) suggesting a strong interest in federal expertise and uniformity. And jurisdiction in patent cases in particular is virtually unique in consolidating all appeals of cases arising under the patent laws in a single court of appeals--the United States Court of Appeals for the Federal Circuit.(92) By contrast, were states to enact post-deprivation remedies that passed constitutional muster, presumably issues of patent and copyright law--for example, whether an intellectual property right was valid, and whether the allegedly infringing use was illegal--would have to be decided in the state courts, with only a minute likelihood of federal review by the United States Supreme Court.(93) To be sure, state courts do now occasionally decide issues of patent or copyright law; when those issues arise as defenses, or as counterclaims, they fall outside the grant of exclusive federal court jurisdiction. But these situations run counter to the general aspiration for federal uniformity and expertise. One would not welcome an expansion of the circumstances in which state courts must decide issues of federal intellectual property law.

B. Rely on a Cause of Action Against State Officials

A second approach to providing damages to intellectual property holders--one that would require at most a minor amendment to existing intellectual property laws(94)--would be for them to sue state officials. In the first instance, the resulting regime would raise a host of problems. One would have to survey existing federal intellectual property laws to determine exactly to what extent they impose damages liability on individual officers?(95) Beyond that, the officials may possess a qualified immunity from damages, permitting compensation only when their conduct violated clearly established law.(96)

Even were Congress to amend the laws to make clear that qualified immunity was not to be conferred on state officials,(97) the resulting regime would raise a host of practical problems. There is a conventional set of arguments about the limitations of relying exclusively on liability of individual officers: plaintiffs may have difficulty identifying and suing all of the responsible individuals; it may be burdensome to adjudicate multiple claims against multiple individuals and prove their individual responsibility for the acts in question; juries may hesitate to award adequate damages against individual officers serving the public under often difficult conditions;(98) and collecting on multiple judgments may be burdensome or, as a practical matter, impossible, for individual officials may have few if any resources from which a judgment could effectively be collected.

At least some of these arguments may have less force in the context of suing state officials for violation of intellectual property rights than they have in some other settings (for example, suits against police officers). Often it will not be difficult at all to identify the responsible officials or to establish their personal responsibility for infringement; moreover, professors who willfully violate copyrights in reproducing course materials, or researchers who willfully infringe patents, may not elicit a great deal of jury sympathy. But at least in some instances--for example, infringement of a commercially valuable patent--the concern about the limited resources of individual defendants is likely to have considerable weight. At first blush, then, the option of recovering damages against officials appears to be worth a good bit but is hardly certain to be adequate for plaintiffs in all instances.

But such a regime would pressure states to provide counsel for officials who are sued and to indemnify officials against whom judgments are rendered. Were indemnification universal and comprehensive, the resulting system would approximate direct governmental liability.(99) Indeed, some have viewed the existing regime for civil rights litigation under 42 U.S.C. [sections] 1983 as following this approach in practice, for Section 1983 does not authorize damage actions against the state as such(100) but does permit suits against state officials in their personal capacities, and many states provide officials with defense counsel and indemnification.(101)

Yet it is too easy, in my view, to equate officer liability accompanied by indemnification with direct governmental liability. While most states do indemnify such individuals, it is also true that indemnification is neither universal, unlimited in scope, nor free from possible friction in operation.(102) Some state employees or agencies may (advertently or otherwise) be excluded; indemnification may be permissive rather than mandatory (though admittedly a routine practice of permissive indemnification may blunt any distinction); some states impose monetary limits on indemnification; and many indemnification provisions exclude conduct that is criminal, egregious, willful, or the like.(103) Given these kinds of gaps, to shift damages liability from state governments to state officials would at a minimum have significant transition costs. And even with complete indemnification, officials nonetheless might well fear the entry of significant judgments against them personally.(104)

Finally, even universal indemnification may not be equivalent to governmental liability. In cases that involve very large damages, the judgment may exceed the individual officer's net worth. It is unclear that every state with an indemnification policy would simply write a check for the judgment amount directly to the plaintiff. Though some state indemnification laws would appear to authorize that result, other states seem to provide that a government's obligation to indemnify does not mature at the time that a judgment is entered against the officer but only when the officer-indemnitee has sustained a loss by actual payment of the judgment,(105)

To be sure, if federal law were amended to rely exclusively on official liability and to make clear that officials lack qualified immunity, states would be under considerable pressure to expand the scope of their indemnification provisions. That kind of federal pressure, however, even if it were to provide an adequate substitute for governmental liability, hardly constitutes a blow for harmonious federalism.(106)

C. Suit by the United States

Congress could attempt to close the remedial gap by authorizing the United States to sue state infringers, on behalf of the victimized owners of intellectual property rights, with the proceeds of such actions paid over to the victims. It is well established that states have no immunity from suit by the United States.(107) It is equally well established that Congress may authorize the United States to bring suit to enforce federal law, whether or not the United States claims a proprietary interest in the outcome.(108) Thus, the argument goes, Congress may authorize suit by the United States to enforce laws, like the intellectual property laws, that are designed primarily to protect private parties.(109) There seems to be no constitutional impediment to further provision that any fine or other money judgment collected in such an action be paid over to the injured parties--in this case, to intellectual property holders.(110) Indeed, just this approach has been followed under the Fair Labor Standards Act;(111) there, the Department of Labor is authorized to sue employers (including state employers) for damages and in turn to pay the recoveries over to the employees whose rights were violated.(112)

To be sure, the Supreme Court has never squarely upheld this statutory scheme against constitutional challenge. Perhaps the current Court's assertiveness in protecting its vision of constitutional federalism might lead it to view this technique as an end run, improperly pressing private claims against the states.(113) Still, it would require a significant change in existing doctrine to rule that Congress lacks power to authorize a federal agency--whether the Patent and Trademark Office, the Register of Copyrights, the Department of Justice, or some new institution--to sue a state for infringement of intellectual property rights, with any monetary judgment to be paid initially to the United States but ultimately to the intellectual property holder.

Such a scheme, however, would represent a major shift in enforcement technique. One might well question whether the fact that a violator of federal law is a state agency necessarily provides a reason for public enforcement.(114) If a university has infringed a patent, it is hard to see why the appropriate enforcement strategy should differ if the violator is Penn State (a state institution) or the University of Pennsylvania (a private one). (By the same token, as local governments have no immunity, one could similarly question why the enforcement strategy should differ if the defendant is SUNY or CUNY.) And Congress may reasonably doubt whether federal governmental resources are wisely used to pursue litigation against state agencies when a private rightholder's interest is great but the public interest may be small.(115) Moreover, such a scheme would require creation of new and substantial enforcement agencies within the federal government and large appropriations to fund their activities. Even were such agencies created and adequately staffed, by their nature they might be less flexible and effective than a scheme of private enforcement, which can respond relatively quickly and effectively as enforcement needs arise or change. In the end, there is reason to doubt that, in practice, enforcement by the federal government will be sufficiently routine and robust to serve as the front-line enforcer of regulatory objectives.(116)

Despite these disadvantages, when the Supreme Court has precluded private damage actions against the states by intellectual property holders themselves, this approach offers a second-best solution that appears to be constitutionally permissible. From the states' standpoint, creation of additional federal bureaucracies with the exclusive purpose of enforcement against state governments may be anything but welcome.(117) Indeed, it is an irony of the Court's current limitations on private enforcement that it could provide an impetus for "big government" as the only remaining method of full enforcement against the states. A similar irony emerges from the Court's "anti-commandeering" line of decisions, which by precluding federal direction of state officials who participate in administering federal programs, could lead instead to the enforcement of federal directives exclusively by a larger federal bureaucracy.(118) But in both cases, the risk may be more theoretical than real, given how unlikely it is that Congress would expand federal enforcement resources to compensate for the preclusion of suits by private parties.

Congress could, however, explore a variety of ways of establishing what I call hybrid schemes. These are schemes that avoid large expansions of federal bureaucracies, seeking instead to meld the pragmatic advantages of private initiative with the constitutional authority of the United States to overcome state immunity.(119)

1. Initial suit by private relators: the qui tam model

Much has been written about the constitutionality of the qui tam action--an historic form of suit in which a private person (called a relator) is authorized, in the name of the United States, to commence a civil proceeding for the recovery of damages, and/or to enforce penalties and to share in any monetary recovery.(120) A number of such measures have been enacted in our nation's history. The provision found in the Federal False Claims Act,(121) which includes a number of provisions under which the Department of Justice may exercise control over the suit initiated by the relator, is the most vibrant qui tam mechanism and the one that has been the subject of most commentary.

Congress could imitate that approach and amend the intellectual property laws to permit private parties, as relators, to bring suit on behalf of the United States to enforce the United States' sovereign interest in enforcement of those regulatory regimes. Any qui-tam-like procedure, however, raises numerous constitutional questions. One of those questions--whether a relator has standing to sue--was answered last Term in Vermont Agency of Natural Resources v. United States ex rel. Stevens.(122) There, the Court upheld a relator's standing under Article III, relying on the theory that he had received a partial assignment of the claim of the United States and that his standing to press a claim as an assignee was fortified by the long history of qui tam actions.(123) The Court proceeded to interpret the False Claims Act as not authorizing qui tam actions against the states, and therefore did not reach two other constitutional questions--(1) whether a qui tam action in a federal court against a state is barred by the Eleventh Amendment, and (2) "whether qui tam suits violate Article II, in particular the Appointments Clause of Section 2 and the `Take Care' Clause of Section 3."(124)

Much has been written about both of these issues.(125) The gist of the argument that qui tam actions do not violate the Eleventh Amendment is some combination of these contentions: (a) suits by the United States against the states are not barred by the Eleventh Amendment; (b) the United States can sue only through its agents; (c) Congress is free to authorize qui tam relators, rather than the Attorney General or other executive officials, to serve as agents in bringing suit on behalf of the United States; and (d) the United States is free to specify that some or all of the recovery it obtains be paid to private persons injured by the conduct in question.

However, I am doubtful that that argument will prevail. To begin with, the theory on which standing was upheld in the Stevens decision was that the relator is bringing suit not on behalf of the United States, but rather as a private party suing as an assignee--a theory that would seem to collide with the state's immunity from private suit. (If a private party may not sue on his own claim, why should he be able to sue as an assignee of another's claim?) The prospect that qui tam suits against states will be found wanting seems particularly likely in view of the discussion during the prior Term, in Alden v. Maine, of why suits against states by the United States, unlike those by private plaintiffs, are not barred by sovereign immunity:
   A suit which is commenced and prosecuted against a State in the name of the
   United States by those who are entrusted with the constitutional duty to
   "take Care that the Laws be faithfully executed," U.S. Const., Art. II,
   [sections] 3, differs in kind from the suit of an individual: While the
   Constitution contemplates suits among the members of the federal system as
   an alternative to extralegal measures, the fear of private suits against
   nonconsenting States was the central reason given by the founders who chose
   to preserve the States' sovereign immunity. Suits brought by the United
   States itself require the exercise of political responsibility for each
   suit prosecuted against a State, a control which is absent from a broad
   delegation to private persons to sue nonconsenting States. (126)


The language seems almost designed to provide the basis for holding qui tam actions against the states unconstitutional.(127) For private suits by relators do not "require the exercise of political responsibility for each suit prosecuted against a State."(128)

One might question, as I(129) and others(130) have, the persuasiveness of the[] Court's reasoning, which in effect suggests that political safeguards of federalism must govern not only the exercise of legislative authority but also particular decisions whether to sue a state that has violated congressionally-created duties. That approach implicitly discounts the value of permitting Congress to authorize private suit precisely to permit regular enforcement insulated from shifts in the inclinations of successive administrations, efforts to forestall enforcement by state defendants (whether directly or through their representatives in Congress), or the vagaries of annual appropriations.(131) But question the Court's reasoning though one might, it seems reasonably clear to me which way the wind is blowing on this issue.(132) And the long history of qui tam actions, to which one might appeal in seeking to establish their constitutionality, does not appear to extend to qui tam actions against the states. In the end, as Professor Caminker notes, "qui tam authorization feels like something of a bootstrap; one might suspiciously view it as an effort to circumvent the Seminole Tribe/Alden rule that Congress cannot authorize private parties to assert their `own' interests against the states."(133)

Others have discussed the consistency of qui tam suits with Article II.(134) I have little to add to the able commentary on this issue, except to highlight one additional point. The arguments that a relator must make in order to overcome sovereign immunity and Article II objections are, if not in conflict, at least somewhat in tension: to meet the former, the relator must claim to be bringing suit on behalf of the United States rather than on his own behalf; but that claim sharpens concerns under Article II that executive authority is being improperly assigned to others. It may not be impossible to answer both objections convincingly, particularly by vesting enough oversight and supervisory power in the executive to both satisfy Article II and to cause the suit to be one viewed, for sovereign immunity purposes, as one brought by the United States. However, such an answer may not convince a Court that is particularly alert to protecting both state sovereign immunity and a conception of executive unity.

In the end, extending a qui-tam-like scheme to intellectual property rights does not seem like a promising route.

2. The United States as cleanup batter.

A different kind of hybrid scheme, though one not without some awkward features, would seem to avoid some of the difficulties just noted. Suppose that the holder of an intellectual property right first prevailed in a private suit against a state official and obtained a damages award to be paid by the officer in his personal capacity and/or an injunction. Nothing would then stop the United States from bringing a follow-up action, this time against the state, seeking a civil fine to be paid from the state treasury for the state's violation of federal law. And here, as previously noted, Congress could separately provide that although any judgment would be payable entirely to the Treasury, the United States would in turn pay at least some of the funds thus recovered as compensation to the injured intellectual property owner.

Needless to say, it is cumbersome to require two separate litigations in order adequately to enforce federal law. This scheme could, however, be designed so as to create very strong incentives for the state to take action that would forestall the need for the second litigation. First, a statute could provide that the United States would not bring suit if the plaintiff had, within a specified period of time, obtained full payment of the initial damages judgment against the officer--whether payment was made by the judgment creditor or by the state itself.(135) Second, the statute could expressly authorize the United States, were it to bring suit for a civil fine, to invoke issue preclusion against the state, at least insofar as the state had participated in the first litigation.(136) Finally, the statute could authorize recovery of fines in the amount of double or triple the amount of harm inflicted, and also an award of attorney's fees. Faced with such a scheme, a state would have very strong incentives to pay any damages judgment against an officer in the initial litigation, for otherwise, it would face the prospect of a second litigation that it was likely to lose (because of issue preclusion) and in which the eventual judgment could be quite costly.

What would be the advantages of this approach as compared to rival schemes? First, it would make private parties, rather than the United States, the front-line enforcers of intellectual property rights. The United States would have to sue only in those cases in which (a) an initial litigation had been successful (permitting the courts, rather than, for example, the Department of Justice, to be the initial filter of meritoriousness),(137) and (b) despite a state's strong incentives to make good on that judgment so as to forestall further litigation, the state had failed to do so.

I can well imagine that federal lawyers, whether in the United States Attorneys' Offices or in federal agencies, will hardly welcome being asked to serve as little more than collection agents for private parties holding intellectual property rights, and that such litigation would not necessarily be the highest priority for their time. But hiring private lawyers to pursue suits in which (unlike qui tam actions) the decision to file was made by a federal official would make considerable sense: the action, though formally on behalf of the United States, would be primarily for the benefit of the private parties themselves, and presumably the lawyers would most often be the same ones who litigated the initial private suit and thus were familiar with the case.

A final question about such a scheme would arise if the authority of the United States to bring suit were limited to actions against state, as distinguished from private, infringers. Some recent Supreme Court decisions could be read to support the proposition that a law enacted under Article I that regulates only the states and not private actors may, without more, be unconstitutional.(138) No Supreme Court decision so holds, however. Moreover, one can ask whether such a scheme does regulate only the states, or instead is part of an overall scheme of intellectual property regulation that demands of all actors that they be accountable in damages to those whose property rights they infringe. The duties imposed on state and private actors are the same, and the remedies provided differ in offsetting ways: private parties may be sued for damages in a single action; states may be sued for damages only in a second action, but in such an action they face the United States as an adversary and perhaps the threat of double or treble damage liability. There is, it seems to me, a strong argument that any requirement of general applicability would be satisfied by such a scheme. But given that the existence, much less the precise contours, of any requirement are uncertain, one cannot be certain on this score.

D. Waiver Schemes

A final possible set of approaches involves federal legislation conditioning the dispensation of a federal benefit on a state's waiver of immunity. The Supreme Court has recognized broad power under the Spending Clause for Congress to impose conditions upon its award of one kind of federal benefit--federal funds. In South Dakota v. Dole,(139) the Court held that Congress could condition the availability of a percentage of federal highway funds on a state's having raised the drinking age to twenty-one.(140) That was a striking holding for a number of reasons. First, viewing the Twenty-First Amendment as at least potentially a guarantee of state autonomy, the Court assumed that Congress could not directly and unconditionally legislate to raise the drinking age. Yet the Court held that Congress, through its use of the conditional spending power, could do indirectly that which, arguendo, constitutionally it could not do directly. Second, the condition that it imposed on federal spending was one that required states that had previously maintained a lower drinking age to enact legislation in order to qualify for the federal funds. In view of the Court's subsequent decision that Congress may not unconditionally command states to enact legislation,(141) and because the enactment of legislation is often considered to be at the core of governmental authority, even conditional pressure to enact legislation might have been viewed as problematic.

While Dole is thus a broad decision, the general admonition offered earlier about the lack of stability of current doctrine bears special reiteration here. The themes in Justice O'Connor's dissent in Dole resonate with those of more recent majority opinions on federalism issues, and many have suggested, or hoped, that Dole will be limited by a subsequent Supreme Court decision on conditional spending.(142)

The Dole opinion, though upholding the program in question, suggested in its discussion that the spending power is limited.(143) The Court indicated that for a conditional spending measure to be constitutional, (if the spending must be in pursuit of the general welfare,(144) (ii) the condition imposed on the acceptance of the funds must be expressed unambiguously,(145) and (iii) the condition must not be independently unconstitutional--that is, Congress may not induce the states to engage in activities (for example, racial discrimination) that would be unconstitutional if undertaken by the states entirely on their own.(146) The first limit may not in fact be judicially enforceable and does not really limit congressional power,(147) Ordinarily, a well-drafted statute will not run afoul of the second or third limitations either.

In dictum, Dole suggested two other limits that may pose greater difficulties. First, Dole notes prior decisions recognizing that inducement may be so coercive as to pass the point at which pressure turns into compulsion.(148) The Court stressed that on the facts before it, the state would lose only a small percentage of its highway funds--5%--if it did not raise the drinking age, and thus the decision whether to do so remained a state prerogative in fact as well as in theory,(149) Second, Dole suggests a relatedness requirement: that there must be a sufficiently tight relationship between the condition and the purpose of the spending.(150)

The Supreme Court's 1999 College Savings Bank decision(151) included some language that bears on these last two limitations. There, the Court ruled that Congress lacked power to subject the State of Florida to suit under the Lanham Act for false and misleading advertising. In so holding, the Court rejected the argument that the state had waived its immunity by engaging in activity with the knowledge that federal legislation purported to regulate a state voluntarily engaging in that activity. In rejecting that waiver argument, the Court distinguished two decisions upholding the power of Congress to exact a waiver from the states in certain circumstances. One of these decisions was Dole; the other was Petty v. Tennessee-Missouri Bridge Commission,(152) which the Court in College Savings Bank described as holding "that a bistate commission which had been created pursuant to an interstate compact (and which we assumed partook of state sovereign immunity) had consented to suit by reason of a suability provision attached to the congressional approval of the compact."(153) The Court distinguished these two cases in College Savings Bank as follows:
   Under the Compact Clause, U.S. Const., Art. I, [sections] 10, cl. 3, States
   cannot form an interstate compact without first obtaining the express
   consent of Congress; the granting of such consent is a gratuity. So also,
   Congress has no obligation to use its Spending Clause power to disburse
   funds to the States; such funds are gifts. In the present case, however,
   what Congress threatens if the State refuses to agree to its condition is
   not the denial of a gift or gratuity, but a sanction: exclusion of the
   State from otherwise permissible activity. Justice Breyer's dissent
   acknowledges the intuitive difference between the two, but asserts that it
   disappears when the gift that is threatened to be withheld is substantial
   enough. Perhaps so, which is why, in cases involving conditions attached to
   federal funding, we have acknowledged that "the financial inducement
   offered by Congress might be so coercive as to pass the point at which
   `pressure turns into compulsion.'". In any event, we think where the
   constitutionally guaranteed protection of the States' sovereign immunity is
   involved, the point of coercion is automatically passed--and the
   voluntariness of waiver destroyed--when what is attached to the refusal to
   waive is the exclusion of the State from otherwise lawful activity.(154)


With that background, Congress might consider either of two techniques to induce states to waive their immunity from private suit under the intellectual property laws.

1. Conditional spending.

It appears that Congress could provide that any state agency that receives federal funding--whether for highway construction, education, job training, or university research--must agree, as a condition of receiving that funding, to waive immunity from suit under federal intellectual property laws. Congress could decide that it does not want federal funds being used to infringe intellectual property rights and that to promote that objective, it will condition any grant of funding to a state agency on that agency's waiver of sovereign immunity. Indeed, the connection on these facts between the use of the funds and the condition seems to me tighter than the one upheld in Dole.

Still, one cannot be sure that such a scheme is constitutionally home-free. For one must confront the question whether the price of non-compliance with the condition--loss of federal funds--is so burdensome as to constitute prohibited "coercion." The Court has yet to strike down a program of conditional spending on that basis. And, as Justice Cardozo noted in Steward Machine Co. v. Davis(155) some sixty-four years ago and as commentators have elaborated in more detail,(156) efforts to distinguish coercion from temptation are likely doomed to failure. The difficulties of giving content to this concept in the abstract are matched by the lack of guidance from the case law. I know of no standing federal decision since Dole that has invalidated a law on this ground,(157) and courts have routinely complained that they are not well suited to determining whether a conditional spending program constitutes undue coercion.(158) But as noted in the margin, there is a bit of ferment in some courts of appeals. And the Supreme Court, were it to seek to limit the Dole decision, could rely on the fact that there, the state faced a loss of only 5% of the highway funds in question (despite any convincing reason why the loss of 5% of a $100 million grant should be viewed as less coercive than the loss of 100% of a $5 million grant).(159) As the law now stands, I do not think the coercion limitation poses an obstacle to this approach, but the law in this area may well not be standing still.

Assuming that the coercion limitation does not pose an obstacle, the effectiveness of such an approach depends upon the interaction of two factors. The first factor is the scope of a waiver that can constitutionally be attached to any particular federal spending program--an aspect of the "relatedness" requirement. A state might argue that Congress may not condition funding for a particular program on a state agency's waiver of immunity from suit as to "unrelated" programs that are operated by that same agency but that receive no federal funding. On this question of relatedness, Dole said only that "our cases have suggested (without significant elaboration) that conditions on federal grants might be illegitimate if they are unrelated `to the federal interest in particular national projects or programs.'"(160) However, in practice the Court's application in Dole of any relatedness criterion was quite relaxed;(161) moreover, many doubt the normative significance of the criterion in any event;(162) and there is little case law from the lower courts indicating when a relatedness requirement might have bite.(163) I find persuasive the following argument that Congress may condition funds on a waiver by the entire state agency receiving the funding: Congress does not want federal funds contributing to the infringement of intellectual property rights, and since federal funding for one program frees up money for other programs that the agency operates, Congress has a legitimate interest in conditioning its funding on a waiver by the agency as to all of its operations.(164) And Congress has already in effect acted on the basis of this argument in attaching other conditions to the expenditure of federal funds, providing that conditions prohibiting various forms of discrimination govern not just the particular program receiving federal funding but the entire agency within which that program is located.(165) Still, legislative precedents count for even less than judicial precedents,(166) which themselves may not have much force. Nor can I gainsay that the breadth of the suggested approach--and its easy extension, if validated, to many other federal mandates (e.g., the Fair Labor Standards Act of the Age Discrimination in Employment Act) as to which Congress may not unconditionally impose on the states the fully panoply of traditional sanctions--may trigger the skepticism of those Justices most desirous of protecting their vision of federalism.(167)

The second factor affecting the effectiveness of such an approach raises a factual rather than a legal question: how many state programs or agencies in fact receive federal funding? I assume that most agencies in most states do receive federal funds and could therefore, under this approach, be put to the choice of waiving immunity or forgoing federal funding. That question, however, requires more detailed study.

Even if Congress can effectively secure waivers from essentially all state agencies, this approach raises practical difficulties along a different dimension. Different agencies of the states receive funds under a very large number of authorization provisions. Though no expert in internal congressional procedure, I can think of two ways that the condition might be imposed, and both would require navigating some difficult jurisdictional shoals in Congress. Congress could write the condition into every piece of legislation now on the books that authorizes federal funding of state programs (and every future such measure). That would, of course, be a major effort that, under current arrangements, would require the participation of a very large number of separate committees of the House and Senate. Alternatively, if the rival claims to jurisdiction of various committees could be resolved, Congress could pass a single statute requiring that states waive their immunity from suit with respect to any program or activity that obtains federal funding. Global conditions on all federal spending are not unprecedented; two important civil rights statutes--[sections] 504 of the Rehabilitation Act of 1973(168) and Title VI of the Civil Rights Act of 1964(169)--make nondiscrimination a condition applicable to receipt by states (and others) of any federal funding.(170)

Based on the law as it now stands--an important qualification--this approach seems to me constitutionally sound and likely to lead to reasonably plenary remediation against the states. If the jurisdictional problems within the Congress are surmountable, this second, global approach to waiver strikes me as the better one for Congress to follow.

2. Conditional extension of intellectual property rights.

a. The basic approach

A different approach would condition not federal funding, but rather the conferral on the states of new intellectual property rights, on a state's waiver of immunity from suit under intellectual property regimes.(171) The argument supporting this technique would go as follows: (a) Congress need not create intellectual property rights; (b) thus, from the states' standpoint, the property rights they enjoy under federal intellectual property schemes are gratuities; (c) in dispensing those gratuities, Congress may condition them on a state's waiving immunity; and (d) therefore, Congress may provide that a state cannot obtain new intellectual property rights unless it agrees to waive immunity from suit under federal intellectual property schemes.

It is, candidly, difficult to assess the constitutionality of such an approach. While I have considerable sympathy for it, it also raises a set of difficult questions:

(i) Are intellectual property rights really a gratuity? The answer to that question depends, of course, on the baseline against which one measures. Looking only at the Constitution, which by itself does not confer intellectual property rights, one could say that whatever Congress has chosen to confer since 1789 must be a gratuity. But two centuries after the Founding, there are regimes of federal intellectual property rights for which states have long been eligible to apply, and against that baseline of state eligibility, new legislation that threatens to make those rights unavailable to states in the future could be viewed not as a gratuity but as a prohibited sanction. I do not favor the second view, but cannot rule it OUt.(172)

(ii) Even if intellectual property rights are a gratuity, would such legislation unconstitutionally condition eligibility for that gratuity on waiver of a state's constitutional immunity from suit? A similar unconstitutional conditions argument, of course, was made and rejected in Dole. And as a general matter, just when the doctrine of unconstitutional conditions will be applied is hardly crystal clear.(173) But it would have been entirely logical for the Court to have held in Dole--as Justice Brennan argued in his dissent--that states have a constitutional right (so the Court assumed) under the Twenty-First Amendment to regulate the drinking age free of congressional interference, and that Congress may not condition federal funding on a state's yielding that constitutional right. The Court might have so ruled, but it did not.

Nonetheless, as already noted, the Court's growing commitment to state sovereign immunity creates uncertainty whether Dole, though it was a seven-to-two decision, may be regarded as a fixed landmark. Moreover, even without overruling Dole, the Court might decide that the spending power differs in nature from, for example, Congress' legislative authority under the Inventions Clause. Spending, by its nature, requires some specification of the purposes for which the funds are to be spent; moreover, Congress also has an interest in what funds are not spent for--that is, in prohibiting their use for purposes deemed by Congress to be contrary to the general welfare. Those points might be thought to distinguish conditional grants from conditional conferral of intellectual property rights.(174)

(iii) Is the condition imposed on the grant so unrelated to the gratuity being awarded as to be unconstitutional? For reasons similar to those discussed with regard to conditional spending, I do not find this objection persuasive, at least as to a statute that limits its reach to waivers of immunity by the particular state agency that applies for intellectual property rights. Suppose, however, that Congress provided that in order to obtain any new patents, the entire state must waive immunity from patent infringement lawsuits--so that in order, for example, for the biology department of a state university to obtain a new patent, the state would first have to provide a general waiver of immunity from suit under the patent laws--which would then permit suit against the state highway department for infringement of a patent relating to the use of concrete. Is requiring a waiver that extends to the entire state government sufficiently related to the national objective of the patent program--the equitable and efficient enforcement of the patent laws?(175)

One purpose of such legislation would be to create a level playing field for state and private actors, requiring states, like private persons, to accept the burdens as well as the benefits of the patent system. Support for the proposition that a waiver based on that purpose is valid may be found in federal decisions. In Gardner v. New Jersey,(176) the Supreme Court held that a state that "invokes the aid of the bankruptcy court by offering a proof of claim and demanding its allowance must abide the consequences of that procedure";(177) on that basis, Gardner ruled that the state had waived any immunity from adjudication by the federal bankruptcy court of objections to the state's claims against the debtor. And the Court specifically noted that it was the state's affirmative act of filing a claim that waived immunity, adding that it would be unfair to subject claims by states to lesser scrutiny than claims by other creditors.(178)

For similar reasons, when a state government files suit in federal court, it is generally deemed to have consented to suit on counterclaims; as the Court of Appeals for the Fourth Circuit recently stated, "it would violate the fundamental fairness of judicial process to allow a state to proceed in federal court and at the same time strip the defendant of valid defenses because they might be construed to be affirmative claims against the state."(179) However, the few lower court decisions have not extended this waiver doctrine to counterclaims against a state that are not transactionally related, or that seek not merely set off or recoupment but rather an affirmative recovery.(180)

The Supreme Court has not yet squarely ruled on the scope of any waiver effected by a state's availing itself of federal jurisdiction. And there is no doubt that both the bankruptcy and the counterclaim settings involve states trying to have it both ways in a particular lawsuit, which may be thought to be particularly intolerable. By contrast, a state's availing itself of federal intellectual property rights relating to its biological discoveries, for example, could very well be viewed as an invalid basis for exacting a general waiver of immunity from infringement actions on unrelated matters.

One should also note that the College Savings Bank decision, which held that Congress may not overcome state immunity from suit by a private party under the false advertising provisions of the Lanham Act, contains some language that could be viewed as casting doubt on the force of the level playing field justification. In College Savings Bank, in rejecting the argument that a state, when it acts in a proprietary capacity, can be subjected to federal regulation of the market on the same basis as other market participants, the Supreme Court declared: "In the sovereign-immunity context, ... `[e]venhandedness,' between individuals and States is not to be expected."(181) To be sure, that statement was made in the course of rejecting the argument that Congress could unconditionally impose evenhandedness, whereas the waiver scheme would aspire to evenhandedness only if a state first sought future patents; indeed, the College Savings Bank decision expressly re-affirmed the Gardner decision.(182) Nonetheless, College Savings Bank raises the question of how receptive the Supreme Court would be to justifying this kind of waiver scheme on the ground that it levels the playing field between state and private actors.

If, however, Congress could validly enact the scheme just described, could Congress go one step further, requiring that in order to obtain a patent, a state agency must waive immunity from suit under not only the patent but also the copyright and trademark laws? I can understand why this kind of linkage may be important practically; many states may care most about obtaining one set of intellectual property rights (for example, patents for research applications), but may be most likely to infringe a different set of rights (for example, copyrights),(183) Still, even without clear markers for application of the relatedness criterion, the broader waiver seems to me to run a serious risk of invalidation. Indeed, if Congress can go that far, why could not it go further, conditioning the award of federal dollars, or federal patents, on waiver by the state of immunity from suit under all federal statutes?

(iv) Is the condition imposed on the award of new intellectual property rights so burdensome as to constitute prohibited coercion? I noted earlier the absence of legal markers outlining the scope of any such limitation. However, it seems doubtful to me that a threat to withhold new patent rights unless a state agency waives its immunity from patent infringement actions is more coercive than is a threat to withhold large amounts of federal funds.(184) The only basis for viewing the withholding of intellectual property rights as more coercive would be that the federal government has a monopoly on creating intellectual property rights but not on generating funds for state spending. The argument is not persuasive, though, if, as I suspect, the economic value to the states of federal spending dwarfs that of any intellectual property rights the states may acquire. In that case, it would seem to impose far more pressure to threaten to withdraw the former than the latter.

(v) Would the waiver scheme be unconstitutional because it regulates only the states and not private actors? As noted earlier, some recent decisions could be read as suggesting that a law enacted under Article I that regulates only the states and not private actors may, without more, be unconstitutional.(185) Were the Court to recognize such a principle, its application to the legislative proposal under discussion is quite uncertain. On the one hand, one can ask whether a law requiring waiver of immunity does regulate only the states, or instead is part of an overall scheme of intellectual property regulation that demands something of all actors--that they take whatever action is necessary to ensure that they are fully subject to suit for damages. Indeed, it would be difficult to apply a requirement of general applicability to a statute demanding waiver of state sovereign immunity as a condition of obtaining new intellectual property rights, for private actors possess no such immunity. (The statute could demand that private applicants also waive whatever immunity they possess, but that would be an odd demand, as private applicants possess no immunity.) On the other hand, insofar as states alone must waive a protection in order to qualify for new intellectual property rights, they are being treated differently, and that difference might be a matter of particular concern for a Court that views the immunity that states alone possess as fundamental.

While it is particularly difficult to predict how the Court might apply a doctrine that it has yet to recognize, I think there is doubt that a condition attached to the dispensation to states of a gratuity should be viewed as a "regulation" for the purposes of any principle that regulation under Article I must have general applicability. For example, I assume Congress could restrict a spending program by making only private actors, rather than states, eligible grantees, without running afoul of any constitutional principle demanding general applicability. If that is correct, surely Congress could in turn expand the spending program to make states eligible grantees, but only on the condition they waive their sovereign immunity, without infringing that principle. By the same token, Congress should be able to specify that only private actors are eligible to obtain new intellectual property rights (a different kind of gratuity)--and then to expand the award of new intellectual property rights by making states eligible recipients, but only if they waive their sovereign immunity. The proposal under discussion does just that; it merely does so in one step rather than in two.

b. Alternative waiver techniques

Were Congress to require a state to waive its immunity in order to qualify for new intellectual property rights, it might follow two different approaches. What I will call the "state legislation approach" would require a state to enact a statute waiving its immunity in federal intellectual property cases as a condition of obtaining any new federal intellectual property rights; absent such an enactment, no new rights would be awarded.(186) An alternative, which I will call "the affirmative declaration approach," would instead require every application for a federal intellectual property right affirmatively to indicate whether it is being sought on behalf of a state entity and, if it is, to include a certification (perhaps by the Attorney General or his designee) that the state will not assert immunity if sued for infringement under that statutory scheme.

The affirmative declaration approach has some obvious attractions--perhaps most importantly, it may be far easier in practice for Attorneys General or their designees to check a box on a form than it is to get legislation enacted.(187) However, there is a serious legal question about whether the affirmative declaration approach would be effective. Longstanding authority declares that a waiver of immunity by a state official is valid only if that official is authorized under state law to waive immunity on behalf on the state. Thus, in Ford Motor Co. v. Department of Treasury of Indiana,(188) Ford had sued the state in federal court for a tax refund. The Supreme Court noted in its opinion that the state conceded that "if it is within the power of the administrative and executive officers of Indiana to waive the state's immunity, they have done so in this proceeding."(189) But the Court added that the question of who has power to sue is governed by state law, and looking to Indiana law, the Court determined that though the Attorney General was authorized to litigate, he was not authorized to waive Indiana's immunity from suit.(190) The underlying presumption seems to be that ordinarily waiver must be effected either by the legislature or by an official whom the legislature has authorized to waive.

The history of the Ford Motor Co. approach, however, is uneven, for some cases have recognized the validity of a waiver by a state official without inquiring whether that official was authorized by state law to waive the state's immunity. For example, a number of lower federal courts have routinely found that states have waived their sovereign immunity by accepting federal funds whose award is unambiguously conditioned on waiver--without bothering to inquire whether the particular state official responsible for obtaining the funds was authorized under state law to waive immunity.(191) On the other hand, a long line of cases in a different context does look to state law: in determining whether a state Attorney General's decision to remove a state court action to federal court constitutes a waiver of Eleventh Amendment immunity from federal court suit, these decisions have inquired whether state law authorized the Attorney General to waive immunity.(192)

All things considered, then, the state legislation approach seems safer to me.(193) For if the reasoning of Ford Motor Co. still controls,(194) an affirmative declaration by the state Attorney General will not necessarily constitute a valid waiver. Should litigation ensue, a court will have to look behind the affirmative declaration to inquire whether state law authorized the Attorney General, or another official making the affirmative declaration, to waive the state's immunity.(195)

CONCLUSION

I have tried to outline a range of possible approaches that Congress might take if it wishes to close the gap that the Supreme Court's decisions have left in remediation for state violations of intellectual property rights, as well as the salient questions that would arise under each approach. As presently advised, I believe that the most promising alternative, though hardly a sure-fire one, would be the conditional spending approach--assuming, as I do, that most state agencies receive federal funding and thus would be required to waive immunity as a condition of receiving federal grants. The alternative of seeking to condition the grant of new intellectual property rights on a waiver of immunity also seems promising to me, though both more uncertain and less likely quickly to achieve broad coverage. Authorizing a more limited cause of action against the states under Section 5 of the Fourteenth Amendment would appear to pass constitutional muster, but the limitations necessary would make it far less effective, and might encourage the creation of state remedies whose existence would make the cause of action inapplicable while concentrating litigation over intellectual property rights in state courts. The authorization of suits by the federal government is perhaps a bit more promising in theory but unlikely to be authorized in practice.

Several more general points emerge from this discussion. First, the difficulties revealed by a detailed examination of each of the alternatives to direct state governmental liability--that which Seminole Tribe and Alden forbid--reinforce my view that these decisions should not be viewed as of limited importance. It is true that they do not restrict Congress' regulatory authority over state governments, but they do restrict the remedies available for a very broad range of regulatory programs. I have here focused on federal regimes of intellectual property regulation, but the same basic problems exist under a broad range of other schemes of statutes enacted under Article I--from regulations of employment conditions (like the Fair Labor Standards Act(196) and the Age Discrimination in Employment Act(197)) to bankruptcy to safety regulations (like the Federal Employers' Liability Act(198)). Taking a significant bite out of the enforcement apparatus for a vast range of federal statutes is every bit as significant as holding that one or two particular schemes may not be imposed against the states at all.

Second, even if the Constitution permits Congress to pursue one or more of the approaches just examined, in each case Congress will be required to amend federal statutes, once again, in an effort to ensure full remediation. Congress had already done so in response to earlier Supreme Court decisions demanding a "clear statement" that the statutes in question regulated the states and were to be enforced in federal courts(199)--efforts Congress made before the decisions in Seminole Tribe and Alden foreclosed that approach. Perhaps Congress will be able, by again passing legislation, to overcome the limitations that the Supreme Court has imposed. But even if Congress succeeds, with regard to each statutory scheme, in mustering the support necessary to overcome legislative inertia, each such amendment is virtually certain to be subject to legal challenge thereafter. The question remains why Congress should have to jump through one or more of the hoops just discussed in order to be able to make fully effective a broad range of statutory regulations of the states whose constitutionality, at least for now, the Court does not contest.

That brings me to my final point. Commenting in 1997 on the Seminole Tribe decision, I noted that the only constitutional rule of state immunity that was of general and broad applicability was that the states are free from unconsented federal court suit by private individuals seeking retrospective relief, and then only if the statute cannot be viewed as enforcing one of the Reconstruction Amendments.(200) After Alden, one would revise the statement to note that the immunity extends to state as well as federal courts.(201) But just as the Seminole Tribe decision was "a curious and unstable place for the last stand of state sovereignty,"(202) so too is the combination of Seminole Tribe and Alden, leaving Congress essentially free to regulate the states in the exercise of its Article I powers (at least so long as the regulation is equally applicable to private actors and does not involve "commandeering") while denying Congress the necessary tools to make that regulation fully effective. Thus, I am as doubtful today as I was several years ago that the present doctrinal pattern creates a stable resting place.

(1.) Daniel J. Meltzer, State Sovereign Immunity: Five Authors in Search or a Theory, 75 NOTRE DAME L. REV. 1011, 1018-21 (2000) [hereinafter Meltzer. Five Authors]; Daniel J. Meltzer, The Seminole Decision and State Sovereign Immunity, 1996 SuP. CT. REV. 1, 50-51 [hereinafter Meltzer, Seminole Decision].

(2.) 517 U.S. 44 (1996).

(3.) 527 U.S. 706 (1999).

(4.) 527 U.S. 627 (1999).

(5.) Kathleen M. Sullivan, Federal Power, Undimmed, N.Y. TIMES, June 27, 1999, [sections] 4, at 17.

(6.) See also Andrzej Rapaczynski, From Sovereignty to Process: The Jurisprudence of Federalism After Garcia, 1985 SuP. CT. REV. 341,346 n.21 (dismissing sovereign immunity as largely irrelevant to federalism because states are not immune from suit by other states or the United States--with little attention to the effectiveness of such suits in enforcing legal regimes).

Mark Tushnet echoes this perspective, and offers the related argument that "less-than-maximally effective remedies are not strangers even to constitutional law," pointing to cases limiting the reach of Bivens remedies or extending qualified immunity from damages in constitutional tort actions against officials. Mark Tushnet, The Supreme Court 1998 Term Foreword: The New Constitutional Order and the Chastening of Constitutional Aspiration, 113 HARV. L. REV. 29, 73 & n.212 (1999). The point is surely correct, but overlooks the difference between remedies ordered by courts on their own (or when enforcing broadly worded enactments like 42 U.S.C. [sections] 1983) and remedies whose provisions are specifically directed by federal legislation; constitutional foreclosure of the latter is a far more serious matter.

(7.) 426 u.s. 833 (1976).

(8.) Daniel J. Meltzer, Deterring Constitutional Violations by Law Enforcement Officials: Plaintiffs and Defendants as Private Attorneys General, 88 COLUM. L. REV. 247, 282 (1988) (quoting Benno C. Schmidt, Jr., Juries, Jurisdiction, and Race Discrimination: The Lost Promise of Strauder v. West Virginia, 61 TEX. L. REV. 1401, 1413 (1983)).

(9.) 514 U.S. 549 (1995).

(10.) On March 31, 2000, I participated in the Conference on State Sovereign Immunity and Intellectual Property sponsored by the U.S. Patent and Trademark Office, in cooperation with the American Intellectual Property Law Association and the Intellectual Property Law Section of the American Bar Association. On July 27, 2000, I testified at a hearing on State Sovereign Immunity and Protection of Intellectual Property before the Subcommittee on Courts and Intellectual Property of the House Committee on the Judiciary, 106th Congress, Second Session.

(11.) 527 U.S. 627 (1999).

(12.) As to copyrights, see 17 U.S.C. [subsections] 501(a), 511 (1994); as to trademarks, see 15 U.S.C. [sections] 1122, [sections] 3(b) (1994).

(13.) See, e.g., Rodriguez v. Tex. Comm'n on the Arts, 199 F.3d 279, 280-81 (5th Cir. 2000) (adopting the Court's analysis in Florida Prepaid in the copyright context).

(14.) Professors Berman, Reese, and Young note the possibility that the actions of the infringing officials might be characterized as a taking of the plaintiff's intellectual property under the State's eminent domain power. See Mitchell N. Berman, R. Anthony Reese, & Ernest A. Young, State Accountability for Violations of Intellectual Property Rights: How to "Fix" Florida Prepaid (And How Not To), 79 TEX. L. REV. 1037, 1068-72 (forthcoming April 2001). In such a case, the plaintiff would typically have no right to enjoin the official action, but instead would be entitled to just compensation. However, they also suggest, correctly in my estimation, that ordinarily infringements by government officials will not have been authorized by state law and therefore will not be viewed as exercises of the eminent domain power, thus leaving them subject to injunctive relief in appropriate cases.

(15.) 209 U.S. 123 (1908).

(16.) Some have speculated that even that much can no longer be taken for granted in light of recent decisions in Idaho v. Coeur d'Alene Tribe, 521 U.S. 261 (1997), and Seminole Tribe v. Florida, 517 U.S. 44 (1996), each of which, on quite different grounds, refused to uphold a federal court injunctive order against state officials. See, e.g., Melvyn R. Durchslag, Accommodation by Declaration, 33 LOY. L.A. L. REV. 1375, 1390 (2000); Vicki C. Jackson, Seminole Tribe, The Eleventh Amendment, and the Potential Evisceration of Ex Parte Young, 72 N.Y.U. L. REV. 495, 530-38 (1997); Carlos Manuel Vazquez, Eleventh Amendment Schizophrenia, 75 NOTRE DAME L. REV. 859, 862, 911 (2000). Much could be said about this question, but I read each of those cases somewhat more narrowly.

(17.) To make such injunctions more useful for plaintiffs, Congress might extend the availability of attorney's fees (which today may not be routinely available, but only when the defendant's conduct was willful, wrongful, or otherwise culpable). See 35 U.S.C. [sections] 285 (1998) (authorizing an award of fees in "exceptional cases" of patent infringement); 17 U.S.C. [sections] 505 (1998) (authorizing reasonable fees to the prevailing party in a copyright infringement case); 15 U.S.C. [sections] 1117(a) (1998) (authorizing fee awards in "exceptional" trademark cases). See generally 7 DONALD S. CHISUM, PATENTS [sections] 20.0314][C], at 20-459 (rev. ed. 2000); 4 MELVILLE B. NIMMER & DAVID NIMMER, NIMMER ON COPYRIGHT [sections] 14.10[D] [1] [hereinafter NIMMER ON COPYRIGHT].

If infringement continues in violation of the injunction, it appears that the plaintiff may then be able to obtain compensation from the state itself--in the form of a compensatory contempt award--for harm suffered after the injunction was issued. See Hutto v. Finney, 437 U.S. 678, 690-93 (1978). Hutto in fact upheld two different fee awards: although one such award was premised on the enforcement of rights under the Fourteenth Amendment, the other was a more general decision that a fee award, as a means of ensuring that a prospective injunction not be ignored, was an appropriate order whose issuance did not violate the Eleventh Amendment. See id. at 690-91 ("[f]ederal courts are not reduced to issuing injunctions against state officers and hoping for compliance. Once issued, an injunction may be enforced. Many of the court's most effective enforcement weapons involve financial penalties. [Like criminal contempt,] [c]ivil contempt ... may ... be punished by a remedial fine, which compensates the party who won the injunction for the effects of his opponent's noncompliance"). And as to that award, the Court specifically upheld an order requiring the payment of attorney's fees against the state--although the initial injunction was issued against state officials, see note 106 infra--for the purpose of deterring violations of the initial injunction and compensating private parties for harm suffered from the violation of the injunction.

For a careful inquiry into the reach of Hutto, see Gordon G. Young, Enforcement of Federal Private Rights Against States After Alden v. Maine: The Importance of Hutto v. Finney and Compensation Via Civil Contempt Proceedings, 59 MD. L. REV. 440 (2000). Young notes that in Hutto, the Court said that its decision that the monetary award did not run afoul of state sovereign immunity was made easier by the presence of four factors: (1) the award served not only to compensate private parties but also to penalize a violation of the court order; (2) the award did not fully compensate the private parties; (3) the award was not so large that it would interfere with the state's budgetary processes; and (4) the state did not claim the award was larger than necessary to enforce the prior order. See id. at 457-58 (quoting Hutto, 437 U.S. at 691-93 & n.18). Whether those factors should be read merely as observations about the facts of Hutto or more strongly as limitations upon the scope of judicial authority--for example, permitting orders only for the purpose of ensuring that orders are enforced, and not for compensatory purposes alone--remains to be seen. Although the award in Hutto was of fees to compensate the plaintiffs' attorneys, subsequent lower court decisions have read Hutto more broadly as permitting other kinds of relief. See, e.g., Wis. Hosp. Ass'n v. Reivitz, 820 F.2d 863, 868 (7th Cir. 1987) (upholding a district court order requiring a state that violated a prior consent decree to pay money to the plaintiffs, in accordance with the terms of the decree); Alexander v. Hill, 707 F.2d 780, 783-84 (4th Cir. 1983) (upholding an order that required the defendants to make payments from the state treasury to individual plaintiffs whose applications for welfare benefits had been delayed without good cause in violation of previous court orders); Fortin v. Comm'r of Mass. Dep't of Pub. Welfare, 692 F.2d 790, 797-98 (1st Cir. 1982) (holding that sovereign immunity does not bar remedial or coercive fines imosed for civil contempt of a consent decree).

(18.) For a decision upholding the personal liability of a state official for damages for copyright infringement, see Richard Anderson Photography v. Brown, 852 F.2d 114, 122 (4th Cir. 1988).

(19.) That is certainly the case where the official's conduct can be viewed as tortious in nature. A somewhat oversimplified historical account would note that ordinarily sovereign immunity did not bar suit against a government officer whose conduct was tortious, but often did bar suit when the conduct was a breach of contract or otherwise related to an obligation for which the officer, as an agent, was not liable under traditional agency principles. See generally David P. Currie, Sovereign Immunity and Suits Against Government Officers, 1984 SUP. CT. REV. 149, 152-54. And as Professor Karlan notes in her contribution to this Symposium, cases of infringement of intellectual property rights are easily viewed as tortious. See Pamela S. Karlan, The Irony of Immunity: The Eleventh Amendment, Irreparable Injury, and Section 1983, 53 STAN. L. REV. 1311, 1325 (2001).

How significant this historic limitation of officer suits to conduct deemed "tortious" is in areas other than intellectual property is less clear. Professor Karlan illustrates the problem with a discussion of a Second Circuit decision involving a lawsuit by a government employee against a state official who, the suit alleged, had worked to have the employee terminated in violation of the Due Process Clause. The court of appeals held that should the plaintiff's claim prove meritorious, he could obtain an injunctive order of reinstatement as well as damages against the official, but because the defendant official had no legal duty to pay the plaintiff's salary, the plaintiff could not obtain back pay. See Dwyer v. Regan, 777 F.2d 825, 835-37 (2d Cir. 1985), discussed in Karlan, supra note 19, at 1321-22. The significance of the preclusion of back pay is uncertain, however, for an award of "damages" might include compensation for loss of salary--if, for example, the plaintiff established that he would not have lost his job had due process been provided.

More importantly, it is even less clear that Congress lacks constitutional authority to enact legislation that imposes personal liability on individual officers in circumstances where, under traditional understandings of agency law, they would not be personally liable. For example, I see no constitutional barrier to a federal statute providing that when welfare benefits are withheld in violation of federal statutes or regulations, the responsible state officials are personally liable for monetary relief--even though, under traditional agency principles, a state official might not be personally liable for the state's wrongful failure to pay benefits.

(20.) Oliver Wendell Holmes, Jr., The Path of the Law, 10 HARV. L. REV. 457, 459 (1897).

(21.) Meltzer, Five Authors, supra note 1, at 1017. For a more elaborate discussion, reaching a similar conclusion, see Peter S. Menell, Economic Implications of State Sovereign Immunity from Infringement of Federal Intellectual Property Rights, 33 LOY. L.A.L. REV. 1399, 1428-39 (2000).

(22.) Menell, supra note 21, at 1433-36.

(23.) There are also considerable complexities involved in long-run relationships between states and private parties, as well as informal constraints, such as concern for reputation, that may affect the extent of infringement. See Robert G. Bone, From Property to Contract: The Eleventh Amendment and University-Private Sector Intellectual Property Relationships, 33 LOY. L.A.L. REV. 1467, 1497-1510 (2000).

(24.) In stressing the useful potential of governmental liability in such settings, one should not overlook the objection to governmental damage liability that Professor Jeffries has voiced in the context of Section 1983 actions. He would restrict such liability to situations in which state actors are at fault, which he would determine by applying a test analogous to existing qualified immunity doctrine in Section 1983 actions. See John C. Jeffries, Jr., In Praise of the Eleventh Amendment and Section 1983, 84 VA. L. REV. 47, 50-54 (1998). It is not clear whether Jeffries would extend his analysis to violations of statutory duties like those under the federal intellectual property laws. However, his analysis is policy-driven; he does not suggest that the Constitution demands his preferred regime. Id. at 51.

For present purposes, what is important is that the Supreme Court's sovereign immunity roles do not address the problem that concerns Jeffries. One who agrees with Jeffries' analysis would want a fault requirement, whether the nominal defendant was a state, a local government, or an individual officer. The Supreme Court's sovereign immunity decisions, by contrast, leave open the possibility that individual officers (in their personal capacity) or local governments might be liable even when not "at fault," while precluding the imposition of retrospective liability upon state governments even when their "fault" for having violated federal law is undisputed. See also Larry Kramer & Alan O. Sykes, Municipal Liability Under [sections] 1983: A Legal and Economic Analysis, 1987 SUP. CT. REV. 249, 272, 283-87.

(25.) Jeffries, supra note 24, at 49. See also John E. Nowak, The Gang of Five & the Second Coming of an Anti-Reconstruction Supreme Court, 75 NOTRE DAME L. REV. 1091, 1093 (2000); Ernest A. Young, State Sovereign Immunity and the Future of Federalism, 1999 SUP. CT. REV. 1, 37. Cf. Vicki C. Jackson, Principle and Compromise in Constitutional Adjudication: The Eleventh Amendment and State Sovereign Immunity, 75 NOTRE DAME L. REV. 953, 964 n.38 (2000) (deeming the capacity of statutory beneficiaries to sue to be a protection of liberty and a feature of effective enforcement).

(26.) See text accompanying notes 99-105 infra.

(27.) See Daryl J. Levinson, Making Government Pay: Markets, Politics, and the Allocation of Constitutional Costs, 67 U. CHI. L. REV. 345 (2000).

(28.) See Roderick Hills, Jr., The Eleventh Amendment as Curb on Bureaucratic Power, 53 STAN. L. REV. 1225 (2001).

(29.) See TOM R. TYLER, WHY PEOPLE OBEY THE LAW (1990).

(30.) See Bone, supra note 23, at 1497-1510.

(31.) Instead, the Court has in a more general way put forward two propositions that, as I have suggested before, see Meltzer, Five Authors, supra note 1, at 1023, are in some tension with each other: (1) the remedies for enforcement of federal rights left untouched by sovereign immunity are adequate, and (2) recognition of immunity so as to bar retrospective liability is a vital protection of state sovereignty. The former statement looks at matters from the plaintiff's standpoint and the latter from that of the state, but the tension remains. If retrospective state liability is a sufficiently important remedy, then it is hard to contend that other remedies are "adequate" (unless "adequate" is given a rather minimal content). And if the constitutional preclusion of retrospective state liability is a vital protection of state sovereignty, presumably that is because something about the precluded remedy makes it distinctive as compared to the other remedies whose provision the Constitution does not preclude. It would not be a formal contradiction to suggest that a remedy could at once be of little value to the plaintiff and very damaging to the state, but the Court does not contend that, much less explain why, that unlikely pair of characteristics exists.

(32.) Eugene Volokh, Sovereign Immunity and Intellectual Property, 73 S. CAL. L. REV. 1161 (2000).

(33.) Id. at 1163 n.4 (citing 28 U.S.C. [subsections] 1498, 2412(d)(1)(A) (1998)). As Volokh points out, statutory damages in copyright are available, but only $500 per infringed work and only as an alternative, rather than a supplement, to actual damages. Id.

(34.) Id. at 1165 & n.10. Just such a comparison was made in Florida Prepaid, where the majority highlighted and the dissent downplayed the significance of those differences. Compare 527 U.S. at 648 n.11 with id. at 664 n.15 (Stevens, J., dissenting).

(35.) Professor Jackson has suggested in a tentative fashion that
   [w]ere the Court to overrule Seminole Tribe and/or Alden, and acknowledge
   congressional power to subject states to suits for damages under otherwise
   valid federal laws, courts could seek to enforce "safeguards" designed to
   encourage such legislative attention. The Court might consider establishing
   a presumption under Article I statutes that remedies that exist as against
   the United States can be extended to the states without threatening their
   constitutional sovereignty; remedies against states that do not extend to
   the United States would need to be separately evaluated to consider whether
   they unduly interfere with the governmental functions (or uniquely
   sovereign interests) of the states.


Jackson, supra note 25, at 1007; see also Vicki C. Jackson, Seductions of Coherence, State Sovereign Immunity, and the Denationalization of Federal Law, 31 RUTGERS L.J. 691, 732-38 (2000). While she appears to suggest such a safeguard primarily as a "clear statement rule" to guide statutory construction rather than as an outright limitation on congressional power, Jackson, supra note 25, at 1008, she does not clearly rule out the latter, id. at 1007 n.172. Indeed, there is some flavor in Jackson's suggestion that she wishes to engage in damage control--to offer the Supreme Court a doctrinal limitation on national power that would be less harmful to federal interests than sovereign immunity.

There is often something unattractive about the federal government's imposing on others regulations or remedial obligations from which it exempts itself. (It may be forgotten that the first statute passed as part of Newt Gingrich's Contract with America was a measure extending coverage to employees of the House and Senate of a variety of federal laws protecting employees that generally applied to non-federal employers. See Congressional Accountability Act of 1995, Pub. L. No. 104-1, 109 Stat. 3 (1995).) The question remains, however, whether the equitable considerations that may undergird notions of evenhandedness should be translated into a constitutional limitation on federal power.

As Professor Jackson acknowledges, her suggested approach is not without difficulties in application. Jackson, supra note 25, at 1009 n.175. She notes in particular that the state and federal governments may have programs or operations that are not strictly comparable, id., and thus determining the correct frame of reference for comparisons will often be anything but obvious. Indeed, the intellectual property disputes against the states have been concentrated in university settings. The federal government, though it does operate some similar institutions (for example, the service academies), has nothing on the scale of the universities of the fifty states. A distinct set of difficulties in application consists of comparing the relative burden of varying sets of regulations. A particular statute may not apply to federal operations because they are governed by some other legislative or administrative arrangement that serves essentially the same purpose; determining which legal regime provides more protection, and imposes more burdens, may not always be easy.

Moreover, it is far from clear what might suffice in Jackson's view to overcome the presumption of uniform application. Perhaps in 1972, when Title VII was extended to state and local governmental employers, employment discrimination, though hardly uncommon in the federal government, was less common than in state governments; perhaps federal civil service rules provided better protection of federal employees against racially motivated actions than did comparable state systems. Indeed, with respect to one set of remedies--suit by the United States to enforce compliance with, for example, the Fair Labor Standards Act (FLSA)--there would be a serious question whether equal treatment could be demanded, for to have the Department of Labor suing, let us say, the Department of Commerce for FLSA violations would raise a serious question about intra-branch disputes.

There is a structural difference between regulation of federal and state operations. Congress may have capacities to monitor and prevent certain kinds of actions by federal officials that it lacks with regard to state officials. These include its normal oversight responsibilities, its power over appropriations, and a set of informal connections to federal bureaucracies for which there are not strict counterparts as to state agencies scattered throughout the nation. To make the cost of state regulation the imposition of similar regulation on the federal government, rather than reliance on these other mechanisms, seems to me to be of uncertain wisdom. And if those mechanisms provide a basis for overcoming the presumption of "equal treatment," then the presumption will virtually always be overcome.

Finally, and most fundamentally, Professor Jackson derives this suggested safeguard both from the fact that the Constitution clearly contemplates the continued existence of the states and from the potential threat that large damages liabilities against the states might create. See Jackson, supra at 733. But there is a gap of daunting proportions between a conclusion that Congress has imposed tougher regulations on the states than it has on comparable federal operations and the conclusion that the continued existence of the states is at risk.

(36.) See 17 U.S.C. [sections] 105 (1976).

(37.) Volokh offers a distinct comparison--of state infringements of intellectual property rights to state condemnations of real property--that he contends undercuts the "moral and pragmatic" arguments against state immunity from infringement actions. Persons whose real property is taken lack the right to injunctions, attorney's fees, or exemplary damages; they are relegated to a state court action for actual damages. Why, he asks, should victims of state infringement of intellectual property rights complain if they fare no better? See Volokh, supra note 32, at 1167-69.

I can suggest several distinct responses to the argument. First, it is not clear that an unauthorized infringement constitutes a taking; longstanding authority under federal law, at least, provides that the United States is not liable in such circumstances for a taking. See note 56 infra. Thus, it is not clear that states, in their inverse condemnation laws, have subjected themselves to liability for infringements even if unauthorized--as one assumes many infringements of intellectual property rights must be. Second, takings of real property rarely go unnoticed, and thus the need for powerful remedies (statutory or treble damages, or an award of attorney's fees) may not be great; by contrast, Congress might reasonably think that infringements of intellectual property rights are more likely to escape detection, and that therefore stronger remedies are needed to provide an adequate disincentive. Third, it may well be the case that infringements of intellectual property rights are often small-scale, making statutory damages a more important remedial tool there than with respect to takings of real property.

(38.) See also Berman, et al., supra note 14, at 1194 n.713 (noting that public choice theory contends that governments may be more likely to disregard the interests of outsiders than of constituents, and that far more intellectual property rights are held by constituents of the United States than by those of any individual state). Volokh's point suffers, I think, from another quirk: state but not local governments possess sovereign immunity. It is difficult to think of moral and pragmatic arguments to justify that distinction.

(39.) Garcia v. San Antonio Metro. Transit Auth., 469 U.S. 528 (1985).

(40.) See McCulloch v. Maryland, 17 U.S. (4 Wheat.) 316, 435-36 (1819).

(41.) See, e.g., Jackson, supra note 25, at 958 & n.22 (2000); Meltzer, Five Authors, supra note 1, at 1047-48; Jonathan R. Siegel, Congress's Power to Authorize Suits Against States, 68 GEO. WASH. L. REV. 44, 52-53, 58-59 (1999).

A striking expression of this view was made in the dissenting opinion in Jim C. v. United States, 235 F.3d 1079 (8th Cir. 2000) (en banc) (8-4 decision). There, the majority upheld a federal spending program that required a state agency, as a condition of receiving a federal grant, to waive immunity from suit for violations of federal standards barring discrimination on the basis of disability. See note 157 infra. In objecting to that result, Judge Bowman stated in dissent:
   I am struck, however, by how easy it would be, if the majority of our Court
   has decided this case correctly, for Congress to overcome this limitation
   on its power. By resort to the spending power (another Article I power, by
   the way), Congress could achieve indirectly the same abrogation of Eleventh
   Amendment immunity it could not achieve directly. Congress could do this by
   the simple expedient of coupling an abrogation provision with a provision
   conditioning the states' receipt of any or all federal funds upon the
   states' waiver of Eleventh Amendment immunity with respect to whatever
   sorts of claims Congress might specify. Given the financial and political
   reality within which state governments struggle to fund their operations
   adequately, most if not all of the states would yield. The same scenario
   could unfold with respect to other kinds of conditions on the states'
   receipt of federal funds, with Congress achieving through the spending
   power ends it otherwise lacks the constitutional authority to pursue.... It
   seems quite clear to me that the Framers never intended the Spending Clause
   to become an enabling provision for the otherwise unconstitutional exercise
   of federal power over the states. Yet this is precisely what today's
   decision ordains. If our Court will not take a hard look at the anomaly
   created by a "spending power uber alles" mentality, perhaps the Supreme
   Court will.


Jim C., 235 F.3d at 1085 (Bowman, J., dissenting).

(42.) 527 U.S. 627 (1999).

(43.) Pub. L. No. 102-560, 106 Stat. 4230 (codified at 35 U.S.C. [subsections] 271(h), 296 (199).

(44.) Seminole Tribe v. Florida, 517 U.S. 44, 72-73 (1996).

(45.) Id. at 65-66; Fitzpatrick v. Bitzer, 427 U.S. 445, 456 (1976). To exercise that power effectively, Congress must manifest with adequate clarity its intention to abrogate immunity. Seminole Tribe, 517 U.S. at 55-56. There was no doubt that the Patent Remedy Act had been drafted with the requisite clarity. See Florida Prepaid Postsecondary Educ. Expense Bd. v. College Sav. Bank, 527 U.S. 627, 635 (1999).

(46.) 521 U.S. 507 (1997).

(47.) Florida Prepaid, 527 U.S. at 637-39.

(48.) 474 U.S. 327 (1986).

(49.) See Florida Prepaid, 527 U.S. at 645 (quoting 5 D. CHISUM, PATENTS [sections] 16.0212], at 16-31 (rev. ed. 1998)) ("`It is, of course, elementary, that an infringement may be entirely inadvertent and unintentional and without knowledge of the patent.'").

(50.) 451 U.S. 527 (1981).

(51.) 494 U.S. 113 (1990).

(52.) Florida Prepaid, 527 U.S. at 643.

(53.) For criticism, see, for example, Meltzer, Five Authors, supra note 1, at 1056-62; David L. Shapiro, The 1999 Trilogy: What is Good Federalism?, 31 RUTGERS L.J. 753,75657 (2000); Michael Wells, "Available State Remedies" and the Fourteenth Amendment: Comments on Florida Prepaid v. College Savings Bank, 33 LOY. L.A.L. REV. 1665 (2000).

(54.) An example of this approach is found in a bill introduced by Senator Leahy. See Title II of the Intellectual Property Protection Restoration Act of 1999, S. 1835, 106th Cong., [sections] 201 (1999).

(55.) The Court has suggested that a state law post-deprivation remedy against state officials rather than the state can be adequate. Hudson v. Palmer, 468 U.S. 517, 520 n.1 (1984).

(56.) An effort to draft a narrow statute that purports to remedy possible violations of the Just Compensation Clause, rather than violations of the Due Process Clause, would encounter similar problems. First, it appears to be well accepted under the Just Compensation Clause that government action that is ultra vires is not a taking. See generally Matthew D. Zinn, Ultra Vires Takings, 97 MICH. L. REV. 245 (1998). Insofar as state officials infringe intellectual property rights without state authorization, their conduct would not give rise to a right to just compensation and thus, under the approach of Florida Prepaid, the Patent Remedy Act would be constitutionally suspect as sweeping more broadly than does the Constitution.

Relatedly, even where a taking is authorized, a claim for just compensation ordinarily is not ripe until the claimant has sought compensation under state law. See Williamson County Reg'l Planning Comm'n v. Hamilton Bank of Johnson City, 473 U.S. 172, 194-97 (1985). Insofar as states do offer compensation for takings of intellectual property rights, efforts to provide a direct federal right of action without regard to the existence of state remedies would seem to regulate conduct that, under the analysis of Florida Prepaid, is not itself a constitutional violation under the Just Compensation Clause. For a thorough analysis of this question, see Max Kidalov & Richard H. Seamon, The Missing Pieces of the Debate over Federal Property Rights Legislation, 27 HASTINGS CONST. L.Q. 1 (1999).

(57.) In addition to Florida Prepaid Postsecondary Education Expense Board v. College Savings Bank, 527 U.S. 627 (1999), see Board of Trustees of University of Alabama v. Garrett, 121 S. Ct. 955 (2001), Kimel v. Florida Board of Regents, 528 U.S. 62 (2000) and City of Boerne v. Flores, 521 U.S. 507 (1997).

(58.) Garrett, 121 S. Ct. at 967-68 (2001); id. at 968-69 (Kennedy, J., concurring) Kimel, 528 U.S. at 89-91; Florida Prepaid, 527 U.S. at 639-41; City of Boerne, 521 U.S. at 530-33.

(59.) Florida Prepaid, 527 U.S. at 639 (quoting City of Boerne, 521 U.S. at 519-20).

(60.) Id.

(61.) For apparent agreement with this view, see Richard E. Levy, Federalism: The Next Generation, 33 LOY. L.A.L. REV. 1629, 1650-51 (2000).

(62.) 42 U.S.C. [subsections] 2000bb-2000bb-4 (1994).

(63.) 5 U.S. (1 Cranch) 137 (1803).

(64.) 521 U.S. at 520.

(65.) 528 U.S. 62 (2000).

(66). Id. at 88-89 (citing Florida Prepaid, 527 U.S. at 639-48, and City of Boerne, 521 U.S. at 530-31).

The reading offered is also consistent with language in the Florida Prepaid decision, which described City of Boerne as having "held that for Congress to invoke [sections] 5, it must identify conduct transgressing the Fourteenth Amendment's substantive provisions, and must tailor its legislative scheme to remedying or preventing such conduct," 527 U.S. at 639, as well as with the statement in College Savings Bank v. Florida Prepaid Postsecondary Education Expense Board that because
   there is no deprivation of property at issue here, we need not pursue the
   follow-on question that City of Boerne would otherwise require us to
   resolve: whether the prophylactic measure taken under purported authority
   of [sections] 5 (viz., prohibition of States' sovereign-immunity claims,
   which are not in themselves a violation of the Fourteenth Amendment) was
   genuinely necessary to prevent violation of the Fourteenth Amendment.


527 U.S. 666, 675 (1999). It is also consistent with much language in City of Boerne itself. See, e.g., City of Boerne, 521 U.S. at 534 ("Simply put, RFRA is not designed to identify and counteract state laws likely to be unconstitutional....").

(67.) 227 U.S. 278 (1913). See also Shapiro, supra note 53, at 756-57 (noting the tension between Florida Prepaid and Home Telephone).

(68.) 365 U.S. 167 (1961).

(69.) Id. at 248 (Frankfurter, J., dissenting in part).

(70.) Id. at 236 (Frankfurter, J., dissenting in part).

(71.) Moreover, the application of such a requirement would be difficult in practice. In a suit, like Monroe, challenging police practices, the more narrowly that one defines the conduct in question the less widespread it will be. Monroe itself involved allegations of an illegal and warrantless entry into an apartment during the night in which the individuals were required to stand naked as their apartment was ransacked, and then one of them was illegally detained for ten hours of interrogation without being permitted to call his attorney. It may be that officials in Chicago rarely engaged in exactly that pattern of conduct, but violations would be more widespread if the relevant description were warrantless nighttime entries, or warrantless entries generally. But there is not an obvious constitutional benchmark guiding just how narrowly or broadly one should define the relevant violation.

(72.) This is not to say that the passage of time and changes in circumstances cannot affect constitutional rulings. Consider, for example, the decision in FCC v. Pacifica Foundation, 438 U.S. 726 (1978), upholding the right of the FCC to impose sanctions upon a licensee for an indecent afternoon broadcast, in substantial part because the broadcasts were accessible to children. That question might look different in a technological era in which parents may use chips to engage in their own censorship. But such a holding would depend on whether, in light of new technology, there is a constitutional violation in the first instance. Quite different is the lynching example given in the text, for lynching under color of state law remains a constitutional violation, whether common or rare.

(73.) Thus, for example, Michael Wells states that
   [t]he unmistakable holding of Florida Prepaid is that Congress may not
   simply authorize suits against states for constitutional violations without
   first making findings that will satisfy the Court that there is a
   significant problem of state compliance with the constitution and an
   absence of effective state remedies for those violations.


Michael Wells, Suing States for Money: Constitutional Remedies After Alden and Florida Prepaid, 31 RUTGERS L.J. 771,791 (2000). Put that way, it suggests a constitutional test of the necessity or importance of federal intervention; only where there is a substantial problem of state violations does Section 5 authorize Congress to take action. In her contribution to this Symposium, Professor Karlan appears to take a similar view (though she does not discuss the matter at length). See Karlan, supra note 19, at 1316; see also Berman, et al., supra note 14, at 1072.

Marci Hamilton and David Schoenbrod, who are more enthusiastic than Wells about such a limitation, take a similar position. See Marci A. Hamilton and David Schoenbrod, The Reaffirmation of Proportionality Analysis under Section 5 of the Fourteenth Amendment, 21 CARDOZO L. REV. 469 (1999). They view Section 5 as implicitly containing a limitation on legislative authority analogous to limitations on judicial authority to issue injunctions--that "remedies must be in proportion to threatened or existing violations." Id. at 479. The analogy seems incomplete. First, they never explain why Congress's enumerated powers under the Constitution are analogous to limitations on judicial authority to remedy litigated violations. They do state that Congress should be held to a higher standard--because Congress can gather facts more easily and has more latitude in crafting remedies, and its actions can bind the entire nation, not simply one set of litigants--but that argument builds on the premise that the situations are analogous. Id. at 486-87. Second, even accepting that analogy in broad terms, the authors do not explain why congressional authority should be constrained by the more limited remedial traditions of equitable remedies rather than by the less constrained traditions of legal remedies. Although Hamilton and Schoenbrod were not writing specifically about the power to overcome state sovereign immunity from damages remedies, the question why one should analogize that power to the provision of equitable remedies is particularly salient.

Hamilton and Schoenbrod were defending the City of Boerne decision. Most of their examples involve questionable congressional efforts to invoke Section 5 in regulating conduct that is not itself unconstitutional, rather than conduct that is unconstitutional but conceivably quite rare. See, e.g., id. at 487-88.

More generally, the Court has never made it a condition of the constitutional validity of legislation enacted under Article I that Congress show there is a problem that states will not redress--despite the availability of a textual hook, in the Necessary and Proper Clause, on which one might have rested such a limitation. Thus, Congress could pass a prohibition on violence that impedes interstate commerce even if such violence is rare and adequately dealt with by state regulations. The authors fail to explain why authority under Section 5 should be more constrained in this regard. Indeed, the holding and the reasoning of Fitzpatrick v. Bitzer, 427 U.S. 445 (1976), suggest just the opposite. Bitzer recognizes power under Section 5 to abrogate immunity that is lacking under Article I, and bases that greater power in part on the notion that the legislative authority under Section 5 is particularly potent:
   We think that the Eleventh Amendment, and the principle of state
   sovereignty which it embodies, are necessarily limited by the enforcement
   provisions of [sections] 5 of the Fourteenth Amendment. In that section
   Congress is expressly granted authority to enforce "by appropriate
   legislation" the substantive provisions of the Fourteenth Amendment, which
   themselves embody significant limitations on state authority. When Congress
   acts pursuant to [sections] 5, not only is it exercising legislative
   authority that is plenary within the terms of the constitutional grant, it
   is exercising that authority under one section of a constitutional
   Amendment whose other sections by their own terms embody limitations on
   state authority.


427 U.S. at 456 (citation omitted).

I am heartened, however, by a recent and seemingly routine decision in Varner

v. Illinois State University, 226 F. 3d 927 (7th Cir. 2000). There, the primary question was whether the Equal Pay Act, as applied to a state employer, could be upheld as a valid exercise of congressional authority under Section 5 of the Fourteenth Amendment. The court acknowledged that the Equal Pay Act reaches more broadly than does the Equal Protection Clause, for the former, unlike the latter, does not require proof of discriminatory intent to establish a prima facie violation. However, the court of appeals nonetheless upheld the Act as a proportional and congruent response to the problem of wage discrimination in employment. The court first noted that the Act, "by providing a broad exemption from liability under the Equal Pay Act for any employer who can provide a neutral explanation for a disparity in pay, ... has effectively targeted employers who intentionally discriminate against women," and thus prohibits little conduct that is not itself unconstitutional. Id. at 934. The court proceeded to stress that a
   "lack of support [in the legislative record] is not determinative of the
   [sections] 5 inquiry." Kimel, 528 U.S. at 89; [other citations omitted].
   This observation is particularly relevant in the context of the Equal Pay
   Act, where the value of congressional findings is greatly diminished by the
   fact that the Act prohibits very little constitutional conduct, and where
   the historical record clearly demonstrates that gender discrimination is a
   problem that is national in scope. In considering the validity of
   congressional action under [sections] 5 of the Fourteenth Amendment, "[t]he
   ultimate question [is] not whether Congress created a sufficient
   legislative record, but rather whether, given all of the information before
   the Court, it appears that the statute in question can appropriately be
   characterized as legitimate remedial legislation." Kilcullen v. New York
   Dep't of Labor, 205 F.3d 77, 81 (2d Cir. 2000).


Id. at 935 (citations omitted); see also Kovacevich v. Kent State University, 224 F.3d 806, 820 n.6 (6th Cir. 2000), where the court said that it was "untroubled by the fact that Congress did not make extensive legislative findings on states' discriminatory practices when it expanded the EPA to the states in 1974. Lack of legislative findings is not determinative of the [sections] 5 inquiry." Instead, the court was satisfied to note that
   [w]hile we do not believe that the liability standards under the Equal
   Protection Clause and the EPA are identical, they are sufficiently similar
   such that most cases of state-sponsored wage discrimination that have no
   explanation "other than sex" also constitute equal protection violations
   under the Constitution. Although the EPA may bring within its sweep some
   constitutional conduct, this slight overreaching falls well within
   Congress's power to enact "reasonably prophylactic legislation" to address
   intentional, gender-based discrimination.


Id. at 820 (quoting Kimel, 528 U.S. 62, 88 (2000)). The court added: "Because ... the EPA does not substantially overreach into largely constitutional activity in the first place, there is no need to search the legislative record as in Kimel." Id. at 820 n.6.

Several recent Title VII decisions have also refused to reject application of Title VII to the states, even where claims are based on a disparate impact standard that is considerably broader than the purposeful discrimination requirement of the Equal Protection Clause. In general, the decisions rest to a considerable extent on stare decisis and do not contain articulate discussions of the implication of City of Boerne and successive cases. See Butler v. N.Y. State Dep't of Law, 211 F.3d 739 (2d Cir. 2000); Holman v. Ind., 211 F.3d 399, 402 (7th Cir. 2000); In re Employment Discrimination Litig. Against State of Ala., 198 F.3d 1305, 1323-24 (11th Cir. 1999).

(74.) Thus, David Shapiro has suggested to me in conversation that just as in Alden v. Maine, 527 U.S. 706 (1999), the Court essentially treated the holding of Testa v. Kart, 330 U.S. 386 (1947) (providing that a state court may not refuse to entertain federal causes of action when it entertains analogous state causes of action), as inapplicable to a case in which state sovereign immunity was involved, see 527 U.S. at 757-58, the Court may not apply normal principles about the scope of congressional legislative authority under Section 5 when state sovereign immunity (and efforts to abrogate it) are involved.

(75.) The federal courts of appeals appear to treat recklessness or deliberate indifference no differently from intentionality--that is, as establishing that the official caused a deprivation within the meaning of the Due Process Clause. See, e.g., Torres Ramirez v. Bermudez Garcia, 898 F.2d 224, 227 (1st Cir. 1990); Wood v. Ostrander, 879 F.2d 583, 58788 (9th Cir. 1989); Bass v. Jackson, 790 F.2d 260, 262-63 (2d Cir. 1986).

(76.) See Bone, supra note 23, at 1472-73.

(77.) See Shapiro, supra note 53, at 756 n.23.

(78.) Daniels v. Williams, 474 U.S. 327 (1986).

(79.) Moreover, the holding in Daniels was part of a broader effort by the Court to avoid turning routine state law torts into federal violations whenever the tortfeasor happens to be a state official--so that the official's action might be viewed as depriving the victim of liberty or property without due process of law. That concern, whatever its weight on the facts of Daniels, has far less force in the intellectual property area, in which federal law has long been the primary, and sometimes even the exclusive, source of legal rights and duties.

(80.) The Supreme Court has ruled that a state's due process obligation to provide a refund remedy for taxes paid under a law that is unconstitutional applies even when the constitutional rule that invalidates the tax is novel--at least where that rule had previously been applied to the parties in the case in which it was announced. See, e.g., Harper v. Va. Dep't of Taxation, 509 U.S. 86 (1993). In this way, the Court has "cast doubt on the permissibility of denying relief, as a matter of remedial discretion, for violation of a `novel' constitutional rule," RICHARD H. FALLON, JR., DANIEL J. MELTZER & DAVID L. SHAPIRO, HART & WECHSLER'S THE FEDERAL COURTS AND THE FEDERAL SYSTEM 853 (4th ed. 1996) [hereinafter HART & WECHSLER], while struggling to distinguish qualified immunity cases, which appear to call for just that sort of denial, see Reynoldsville Casket Co. v. Hyde, 514 U.S. 749, 753-54 (1995).

The Court's decisions could thus be read to suggest that an official's failure to realize that conduct was unlawful does not mean that the conduct is not intentional within the meaning of the Due Process Clause. On the other hand, the tax refund cases might be distinguished on the ground that the freedom of a state to collect taxes first and litigate later can be viewed as somewhat exceptional. Ordinarily, when a state seeks to impose a duty on an individual, the individual is entitled in an enforcement proceeding to contest the constitutionality of that duty before being obligated to obey. If a state insists that taxpayers pay first and litigate later, the state may be under special due process obligations that are not generalizable. Cf Alden v. Maine, 527 U.S. 706, 738-39 (1999). See generally Carlos Manuel Vazquez, Sovereign Immunity, Due Process, and the Alden Trilogy, 109 YALE L.J. 1927, 1948-50 (2000); Richard H. Fallon, Jr. & Daniel J. Meltzer, New Law, Non-Retroactivity, and Constitutional Remedies, 104 HARV. L. REV. 1731, 1824-33 (1991).

A few lower court decisions have addressed the question of what constitutes intentional conduct under the Due Process Clause in analogous circumstances. One district court found that state officials acted intentionally when they removed a child from her father's home in the mistaken belief that the mother had been awarded custody, stating, "Daniels and Davidson do not bar actions where state actors fail to exercise due care in ascertaining the lawfulness of their conduct and then intentionally deprive another of a constitutional right based upon the negligently formulated belief that such action was justified." Smith v. Eley, 675 F. Supp. 1301, 1305 (D. Utah 1987). See also Coffman v. Trickey, 884 F.2d 1057, 1062 (8th Cir. 1989) ("Daniels and Davidson are not to be cited for the ... proposition that the defendant must have the specific intent to violate the plaintiff's legal rights."). Looking the other way is Souza v. County of Hawaii, 694 F. Supp. 738, 747-48 (D. Haw. 1988) (holding that officials who forced plaintiffs to cease business operations that the officials mistakenly believed violated a condition of plaintiffs' business permit engaged in negligent rather than deliberate action and thus did not violate the Due Process Clause).

One set of commentators has suggested--quite plausibly, it seems to me--that under the narrower view of "intentional," few instances of copyright infringement would qualify. See Berman, et al., supra note 14, at 1062-68.

(81.) For a helpful start on that question, see Menell, supra note 21, at 1413-28.

(82.) See, e.g., Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141,142 (1989) (states may not offer patent-like protection to intellectual creations that are unprotected as a matter of federal law).

(83.) See 28 U.S.C. [sections] 1338(a) (1994) (granting federal district courts exclusive jurisdiction in cases arising under patent and copyright laws).

It might fall within the scope of Congress's constitutional power to authorize removal of such state law causes of action to federal court, on the theory that there is a federal ingredient--the existence, meaning, and scope of a federal intellectual property right--in the state law cause of action. See generally Osborn v. Bank of the United States, 22 U.S. (9 Wheat.) 738 (1824); HART & WECHSLER, supra note 80, at 883-907. However, a state could resist removal in such cases on the grounds that (a) the Eleventh Amendment bars suit against an unconsenting state, and (b) a state may lawfully waive immunity from suit in state court while preserving its immunity from suit in federal court, see Smith v. Reeves, 178 U.S. 436, 441 (1900).

(84.) See Parratt v. Taylor, 451 U.S. 527, 543-44 (1981); Loftin v. Thomas, 681 F.2d 364, 365 (5th Cir. 1982).

(85.) Williams v. St. Louis County, 812 F.2d 1079, 1082 (8th Cir. 1987).

(86.) Parratt, 451 U.S. at 543-44.

(87.) Weimer v. Amen, 870 F.2d 1400, 1405 (8th Cir. 1989).

(88.) See, e.g., Al-Mustafa Irshad v. Span, 543 F. Supp. 922, 928-29 (E.D. Va. 1982); Richard H. Fallon, Jr., Some Confusions About Due Process, Judicial Review, and Constitutional Remedies, 93 COLUM. L. REV. 309, 356 (1993).

(89.) E.g., Rittenhouse v. Dekalb County, 764 F.2d 1451, 1459 (11th Cir. 1985); Groves v. Cox, 559 F. Supp. 772, 775-77 (E.D. Va. 1983).

(90.) E.g., Roy v. City of Augusta, 712 F.2d 1517, 1523 n.6 (1st Cir. 1983).

(91.) 28 U.S.C [sections] 1338(a) (1994).

(92.) 28 U.S.C. [sections] 1295(a)(1) (1994).

(93.) One could imagine an effort to route appeals from the highest courts of each state to the Court of Appeals for the Federal Circuit (in patent cases) or to the regional circuit court of appeals within which the state court is located (in copyright and trademark cases). See Menell, supra note 21, at 1442-43. Although the issue has never been authoritatively resolved, there is authority for the proposition that Congress may give an inferior federal court appellate jurisdiction over the decision of the highest court of a state--at least where the United States Supreme Court may thereafter review the decision of the inferior federal court. See generally James E. Pfander, An Intermediate Solution to State Sovereign Immunity: Federal Appellate Court Review of State-Court Judgments after Seminole Tribe, 46 U.C.L.A. L. REV. 161, 213-22 (1998); Preble Stolz, Federal Review of State Court Decisions of Federal Questions: The Need for Additional Appellate Capacity, 64 CAL. L. REV. 943,945-48 (1976).

A more radical approach would be to route appeals from the state trial courts to the federal courts of appeals (either the regional circuits, or, for patent cases, the Court of Appeals for the Federal Circuit). See Menell, supra note 21, at 1442. There would not appear to be an Eleventh Amendment objection to such an approach, as appeals from the state courts (when the state has consented to state court suit) to the Supreme Court have not been thought to raise an Eleventh Amendment issue. See HART & WECHSLER, supra note 80, at 307-08, 1049 & n. 7. However, the constitutionality of federal appellate review of state law issues decided by a state court, merely because those issues are part of the same case in which there is a reviewable issue of federal law, has never been clearly established and has been thought, at a minimum, to be extremely awkward. See id. at 519-21. For example, the suggested approach would prevent state appellate courts from reviewing the many questions of state procedural and substantive law that would arise in such lawsuits and from providing the kind of supervision of trial court practice that appellate courts typically provide. By the same token, it would either prevent any appellate review of such issues or impose on federal appellate court judges the responsibility for such review as to the laws of many different states.

A cleaner possibility might be to create a new mechanism by which litigants in state court could seek certification of issues of federal law directly to the Court of Appeals for the Federal Circuit. This would be the converse of existing certification practice, under which federal courts may certify a question of state law to the state courts. The situations are not symmetrical, however, because the Court of Appeals for the Federal Circuit is not the highest federal court, and current practice, at least, provides that while a state court must treat as authoritative decisions of the United States Supreme Court on questions of federal law, decisions of federal courts of appeals lack that same authoritative quality. In my view, however, that practice does not have constitutional dimension, and Congress could provide that a state court must honor the Federal Circuit's answer to a certified question of federal patent law--at least until it is overturned by the Supreme Court.

(94.) Statutory amendments would be needed insofar as under existing law defendant officials possess qualified immunity from damages liability. See note 96 infra.

(95.) Authority discussing the extent to which an employee of an organization, public or private, is personally liable for infringements in which the employee participates was surprisingly hard to find--perhaps because the question has rarely been in issue when respondeat superior liability is available. A leading treatise on copyright law suggests (though without copious documentation) that ordinarily an employee is jointly and severally liable with his employer for copyright infringement, although the employee will not be liable if the act of infringement was required as a part of his duties and if he did not exercise discretion or judgment in the conduct of those duties. See 3 NIMMER ON COPYRIGHT, supra note 17, at 12-93. For authority under the patent laws, see American Machinery v. Everedy Mach. Co., 35 F.2d 526, 528 (E.D. Pa. 1929), which notes that infringement "is a tort [and] [a]ll who are parties to it are joint tort-feasors." See also 6 ERNEST BAINBRIDGE LIPSCOMB III, WALKER ON PATENTS [sections] 22-19, at 484-85 (3d ed. 1987) (stating, without citation of authority, that "[a]ny person, legal entity, or government who, without authority from the patent owner, performs an act of making, using or selling a patent invention, or procures such an act to be performed, or adopts it and accepts its benefits when performed, is guilty of an infringement").

(96.) The point is not entirely certain. Federal law immunity doctrines have been defined primarily in connection with constitutional tort actions against state or federal officials and additionally, in the case of suits under state tort law, in actions against federal officials. See generally HART & WECHSLER, supra note 80, at 1164-76. To be sure, Section 1983 provides an express remedy against state officials for violation of federal statutory as well as federal constitutional rights, see Maine v. Thiboutot, 448 U.S. 1 (1980), and the Supreme Court has described the qualified immunity doctrine in terms that apply to all suits under Section 1983, whether they assert a violation of constitutional or of statutory rights. See Harlow v. Fitzgerald, 457 U.S. 800, 818 (1982). However, when suit for a statutory violation is brought under Section 1983, the cause of action is one that applies only to actions taken under color of state law--which for the most part means actions taken by state or local officials.

It is a somewhat different matter when suit is brought under federal statutory regimes, like those regulating intellectual property, that apply both to state officials and to private actors. Under such a regime, there is a plausible argument that the statute should be viewed as establishing a single remedial scheme--particularly insofar as private and official defendants are not situated differently. (Compare faculty members at public and private universities who engage in similar conduct duplicating copyrighted material.) Reinforcement for that view might be found in some of the legislation through which Congress has attempted to abrogate state sovereign immunity. Thus, for example, the Patent and Plant Variety Protection Remedy Clarification Act, Pub. L. No. 102-560, 106 Stat. 4230 (1992), provides: "As used in this section, the term `whoever' includes any State, any instrumentality of a State, and any officer or employee of a State or instrumentality of a State acting in his official capacity. Any State, and any such instrumentality, officer, or employee, shall be subject to the provisions of this title in the same manner and to the same extent as any nongovernmental entity." 35 U.S.C. [sections] 271(h) (1994) (emphasis added). Although the Florida Prepaid decision declared that provision unconstitutional insofar as it purported to make state governments liable in damages to private parties in the same manner as are nongovernmental infringers, that holding would not call into question Congress's power to make state employees liable in damages in the same manner as are nongovernmental employees.

The argument for recognizing immunity is that all of the policy arguments that justify recognition of immunity for public officials sued in constitutional tort actions apply equally in what are essentially statutory tort actions under the intellectual property laws. Reinforcement for that view might be found in existing practice in constitutional tort actions under 42 U.S.C. [sections] 1983, where official defendants enjoy a qualified immunity from personal damages liability that the Supreme Court has not extended to private defendants (in the rare cases in which their actions are deemed to be "under color of law"). See Wyatt v. Cole, 504 U.S. 158 (1992).

The cases are rather unilluminating on the point. Chavez v. Arte Publico Press, 59 F.3d 539, 547 (5th Cir. 1995), vacated on other grounds, 517 U.S. 1184 (1996), assumed without much discussion that defendant officials have a qualified immunity from copyright actions. Lane v. First National Bank of Boston, 687 F. Supp. 11, 15-17 (D. Mass. 1988), aff'd on other grounds, 871 F.2d 166 (1st Cir. 1989), declared that immunity is available, though the court found it inapplicable on the facts. Neither decision even considered the argument against immunity noted above. Looking the other way is Richard Anderson Photography v. Brown, 852 F.2d 114, 122-23 (4th Cir. 1988), which refused to recognize a claim of official immunity. In that case, however, the official's claim was based on state law, which clearly cannot limit federal remedial imperatives; the critical question would seem to be whether federal law itself recognizes such an immunity, a question the Fourth Circuit did not discuss. See also Kersavage v. Univ. of Tenn., 731 F. Supp. 1327, 1330-32 (E.D. Tenn. 1989) (following Richard Anderson in refusing to recognize official immunity, though also suggesting in the alternative that the law of copyright is clearly established so that immunity would not apply in any event). For a thorough discussion that views the issue as less uncertain than I do, and that concludes that officials are probably entitled to invoke qualified immunity when sued under intellectual property laws, see Berman, et al., supra note 14, at 1122-26.

(97.) Professor Vazquez has argued that the Supreme Court may be moving in the direction of constitutionalizing official immunity. Vazquez, supra note 16, at 900-08. Were that so, Congress could not, of course, abolish it, but I remain to be convinced by his prediction.

(98.) See, e.g., Jeffries, supra note 24, at 50-51.

(99.) See Fallon & Meltzer, supra note 80, at 1823; Jeffries, supra note 24, at 62-66. Indeed, Kramer and Sykes have argued that if one makes certain heroic assumptions, individual and entity liability are indistinguishable. See Kramer & Sykes, supra note 24, at 272.

The lower courts have held that a state's voluntary decision to provide indemnification to a state official defendant does not transform an otherwise permissible suit into a constitutionally prohibited suit against an unconsenting state. See, e.g., Demery v. Kupperman, 735 F.2d 1139, 1146-49 (9th Cir. 1984); Jackson v. Ga. Dep't of Transp., 16 F.3d 1573, 1577-78 (11th Cir. 1994); cf Regents of the Univ. of Cal. v. Doe, 519 U.S. 425, 431 (1997) (in rejecting the view that a state lacks Eleventh Amendment immunity when the federal government has agreed to indemnify it, stating that "it is the entity's potential legal liability, rather than its ability or inability to require a third party to reimburse it ... that is relevant" to determining whether state sovereign immunity attaches).

(100.) See Will v. Mich. Dep't of State Police, 491 U.S. 58 (1989).

(101.) For an argument that views the two regimes as being closer to parity than I would, but that acknowledges the limitations of simpler assertions of parity as well as many of the pertinent uncertainties, see Jeffries, supra note 24, at 49-50, 62-66. See also Carlos Manuel Vazquez, What Is Eleventh Amendment Immunity?, 106 YALE L.J. 1683, 1775 (1997).

(102.) See Meltzer, Five Authors, supra note 1, at 1018-21.

(103.)See generally Meltzer, Five Authors, supra note 1, at 1019-20.

(104).See Meltzer, Seminole Decision, supra note 1, at 48.

(105.)In private law, indemnity, as distinguished from insurance, typically requires that the indemnitee have suffered some harm beyond the entry of an adverse judgment--as by paying on or suffering execution of the judgment--before the indemnitor's obligation matures. If the traditional approach were followed in governmental liability situations, it would mean, for example, that a plaintiff who secures a $1,000,000 judgment against an official defendant with a net worth was $25,000 could not simply collect the $1,000,000 directly from the state that employs the official.

Many states have departed from the model of private indemnity and, where indemnification attaches, permit plaintiffs to collect the judgment directly from the government, without first requiring the intermediate step of execution against or payment by the defendant official. See, e.g., Richichi v. City of Chicago, 199 N.E.2d 652, 657-58 (Ill. Ct. App. 1964); City of Memphis v. Roberts, 528 S.W.2d 201,205-06 (Tenn. 1975). Some of the cases that depart from the traditional approach to indemnity turn on statutory language that provides, for example, not for indemnification but rather for payment by the state of a judgment against an official defendant. See, e.g., Dixon v. Holden, 923 S.W.2d 370, 377-78 (Mo. Ct. App. 1996).

Other states, however, adhere to the traditional approach and limit the right to seek indemnity to the defendant official. See, e.g., Johnson v. Miera, 433 N.W.2d 926, 928 (Minn. Ct. App. 1989) (holding that a judgment creditor has no right of action against the state when the state employee against whom judgment had been entered had not requested indemnification, reasoning that the purpose of the indemnification statute is to benefit the state employee). In a similar vein, some states provide indemnity only when the official has suffered damage as a result of the judgment. See Hamlin v. Transcon Lines, 697 P.2d 606, 614 (Wyo. 1985) (holding that the state indemnification regime did not create a right of action against the state in favor of "plaintiffs who have obtained verdicts for injury or wrongful death from negligent governmental employees"; it merely "requires the governmental entity to save the tortfeasor-employee harmless when he can show that ... he has suffered damage").

Where the traditional approach is followed, it could in theory lead to a seemingly pointless cycle in which, in the example given above, the plaintiff initially is able to collect only $25,000 of a $1 million judgment; the official in turn obtains indemnification in the amount of $25,000; the plaintiff, in turn, again collects $25,000 from the replenished coffers of the defendant; and so forth. This cycle could be repeated forty times, see Vazquez, supra note 16, at 881-82 n.92, although in some instances the state official might file for bankruptcy, and a discharge in bankruptcy would put an end to the cycle. In any event, I have seen no reported decisions involving such a cycle, and I doubt that it occurs in practice. The opportunity to avoid such a cycle may be a good argument for courts to interpret their indemnification statutes as departing from the traditional approach, see, e.g., Richichi, 199 N.E.2d at 658, or for governments, if authorized though not required to do so, simply to cover the full amount of the plaintiff's judgment.

Enough has been said, however, to demonstrate that the uncertainty associated with indemnification in states that adhere to some version of the traditional approach is a further source of friction that makes it difficult to assume that a scheme of liability for officials coupled with indemnification will differ little, functionally, from governmental liability.

(106.) See Meltzer, Seminole Decision, supra note 1, at 48. In Hutto v. Finney, 437 U.S. 678, 691-92 & n.19 (1978), an action against state officials, the Court affirmed an order awarding the plaintiffs certain attorney's fees, to be paid out of the state treasury--an order that the Court treated as analogous to compensatory contempt. In rejecting the argument that the order violated the Eleventh Amendment because it required payment by the state rather than by the officials, the Court declared that to have made the officials liable for the fee award "would be a remarkable way to treat individuals who have relied on the Attorney General to represent their interests throughout this litigation"---despite the possibility, mentioned in the Hutto dissent, see id. at 716 (Rehnquist, J., dissenting), that state law permitted indemnification.

A distinct objection to a regime making state officials liable in damages, without any immunity, in suits for infringement of intellectual property rights would note that other plaintiffs who are likely to be less wealthy or powerful (for example, those seeking redress for unconstitutional police conduct) would still have to overcome the barrier of official immunity. See Berman, et al., supra note 14, at 1126-30. A similar objection could be raised about the possibility, explored in Part II(A), supra, of creating a new cause of action, under Section 5 of the Fourteenth Amendment, authorizing damage recoveries from the state treasury for unconstitutional deprivations of intellectual property rights, when victims of other kinds of unconstitutional action lack such a remedy, see Will v. Mich. Dep't of State Police, 491 U.S. 58 (1989).

(107.) E.g., United States v. Miss., 380 U.S. 128, 140 (1965); United States v. Texas, 143 U.S. 621,641-45 (1892).

(108.) See United States v. Raines, 362 U.S. 17, 27 (1960) (holding that Congress may authorize the United States to sue to enforce constitutional provisions); see also United States v. California, 297 U.S. 175,180 (1936) (discussing the United States' authority to sue a state, under the Federal Safety Appliance Act, to collect a civil penalty); Siegel, supra note 41, at 66-68 (arguing that the government's interest in law enforcement justifies an action against any defendant even if the government has no monetary or proprietary interest at stake).

(109.) See generally Siegel, supra note 41, at 67-70.

(110.) See Jonathan R. Siegel, The Hidden Source of Congress's Power to Abrogate State Sovereign Immunity, 73 TEX. L. REV. 539, 553-55 (1995).

(111.) See 29 U.S.C. [subsections] 201-219 (1994).

(112.) See 29 U.S.C. [sections] 216(c); see also, e.g., Reich v. Waldbaum, Inc., 52 F.3d 35, 36 n.3, 38 (2d Cir. 1995); Mitchell v. Riley, 296 F.2d 614, 616 (5th Cir. 1961). The Supreme Court has noted in dictum the power of the United States to sue under the FLSA on behalf of covered employees. See Employees of Dep't of Pub. Health & Welfare v. Dep't of Pub. Health & Welfare, 411 U.S. 279, 285-86 (1973).

Other statutes employing this technique are the Uniformed Services Employment and Reemployment Act, 38 U.S.C. [sections] 4323 (1994), and Title VII of the Civil Rights Act of 1964, [sections] 706, 42 U.S.C. [subsections] 2000e-5(f)(1)(1994).

(113.) Indeed, the Court's doctrine, affording states immunity when the plaintiff is a private party but not when the plaintiff is the United States, has been criticized---often by those who think that Seminole Tribe was wrongly decided. E.g., Meltzer, Seminole Decision, supra note 1, at 55-57; Siegel, supra note 110, at 569-70. However, the point could be turned around by the current Court, taking state immunity from private suit as the starting point and then questioning existing doctrine that affords no state immunity in suits by the United States. See, e.g., Melvyn R. Durchslag, Accommodation by Declaration, 33 LOY. L.A. L. REV. 1375, 1389 (2000) (arguing that the United States is only a surrogate to enforce what is in fact a private right of action). Moreover, the Supreme Court has upheld immunity in an analogous though distinguishable situation. Though in general a state has no immunity from suit by another state, immunity has been recognized when the plaintiff state is merely asserting private claims on behalf of private parties. Compare New Hampshire v. Louisiana, 108 U.S. 76 (1883) (upholding immunity when the plaintiff state was suing on bonds assigned to it by private parties for purposes of litigation that was funded by the bondholders themselves) with South Dakota v. North Carolina, 192 U.S. 286 (1904) (permitting suit when the state sued on bonds that, though originally owned by private parties, had been donated to and thus were now owned by the state).

For an argument that New Hampshire v. Louisiana is distinguishable, see Siegel, supra note 110, at 554 (noting that New Hampshire has no regulatory interest in ensuring that Louisiana pays debts to individuals, whereas the United States does have a regulatory interest in ensuring that states comply with valid federal obligations). For a thoughtful exploration of the possible limits of the argument outlined in text, see Evan H. Caminker, State Immunity Waivers for Suits by the United States, 98 MICH. L. REV. 92, 113-19 (1999).

(114.) See, e.g., Meltzer, Five Authors, supra note 1, at 1022; Siegel, supra note 41, at 95.

(115.) Meltzer, Five Authors, supra note 1, at 1022.

(116.) See Meltzer, Five Authors, supra note 1, at 1021-23; cf. Myriam E. Gilles, Reinventing Structural Reform Litigation: Deputizing Private Citizens in the Enforcement of Civil Rights, 100 COLUM. L. REV. 1384, 1404 (2000) (noting that the Justice Department has filed only three lawsuits under 1994 legislation authorizing the Department to bring pattern or practice suits against law enforcement agencies that violate federal constitutional or civil rights); id. at 1409 (noting the resource and political constraints under which the Justice Department operates). See also Jackson, supra note 25, at 964 n.38 (deeming the right of statutory beneficiaries to sue on their own behalf a protection of liberty and a feature of effective enforcement).

For the interesting suggestion that the United States might be authorized to sue in the more limited instances in which the rightholder is a foreigner--so as to ensure American compliance with obligations under international agreements--see Berman, et al., supra note 14, at 1188-94.

(117.) See Young, supra note 25, at 62-63 ("[T]he development of a federal enforcement bureaucracy whose raison d'etre is suing state governments would surely be an irritant in federal-state relations and a step backward for state independence.").

(118.) See, e.g., Evan H. Caminker, State Sovereignty and Subordinacy: May Congress Commandeer State Officers to Implement Federal Law?, 95 COLUM. L. REV. 1001, 1014 (1995); Meltzer, Five Authors, supra note 1, at 1029 n.84. As compared to reliance on existing state agencies, creating such federal bureaucracies plainly gives states less of a role in shaping administration, and it may also be less efficient (because it may require establishment of a new federal bureaucracy when existing state bureaucracies could take on the administrative tasks more easily).

(119.) A different hybrid from those explored below would authorize an intellectual property owner to petition the United States to sue in the name of the United States, and would authorize a federal agency to decide whether to permit the suit to proceed, and if so, to deputize the private party (and/or her attorney) as an agent of the United States for purposes of bringing the lawsuit. Professor Gilles has argued persuasively that an approach like this one would be constitutional in a different context--suits seeking injunctive relief against state or local law enforcement agencies that have violated federal constitutional or statutory rights. See Gilles, supra note 116. And Professor Siegel argues more broadly that the United States is virtually always free to hire private lawyers to represent it. See Siegel, supra note 41, at 94-103. The approach seems to me, however, to present the most serious practical problems. First, for the responsible federal agency, the workload of investigating numerous petitions filed by unknown petitioners about unknown cases would be very considerable. Beyond that, authorizing unknown lawyers to represent the United States with little effective supervision would raise serious questions; litigants might take litigating positions or engage in conduct that the Department of Justice (or some other federal agency) would never have permitted had the litigation been conducted by regular federal employees subject to ordinary supervision. An effort to avoid these problems, by having federal officials carefully investigate petitions in the first instance and, when litigation has been authorized, carefully supervise the litigants, would eliminate a primary attraction of the mechanism--its capacity to provide effective enforcement without a large investment of public resources.

(120.) See, e.g., Evan Caminker, The Constitutionality of Qui Tam Actions, 99 YALE L.J. 341 (1989); Caminker, State Immunity Waivers, supra note 113, at 98; Siegel, supra note 41, at 73.

(121). 31 U.S.C. [subsections] 3729-3730 (2000).

(122.) 120 S. Ct. 1858 (2000).

(123.) Id. at 1863.

(124.) Id. at 1865 n.8. See also Friends of the Earth, Inc. v. Laidlaw Envtl. Servs. (TOC), Inc., 528 U.S. 167, 197 (2000) (Kennedy, J., concurring) (stating that "[d]ifficult and fundamental questions are raised when we ask whether exactions of public fines by private litigants, and the delegation of Executive power which might be inferable from the authorization, are permissible in view of the responsibilities committed to the Executive by Article II," but not reaching those questions because they had not been raised); Printz v. United States, 521 U.S. 898, 923 (1997) (noting that the unity of the executive would be "shattered ... if Congress could act as effectively without the President as with him, by simply requiring state officers to execute its laws").

(125.) See, e.g., Caminker, supra note 113; Siegel, supra note 41.

(126.) 527 U.S. 706, 755-56 (1999). See also id. at 759-60:
   The difference between a suit by the United States on behalf of the
   employees and a suit by the employees implicates a rule that the National
   Government must itself deem the case of sufficient importance to take
   action against the State; and history, precedent, and the structure of the
   Constitution make clear that, under the plan of the Convention, the States
   have consented to suits of the first kind but not the second.


(127.) Thus, both Professors Caminker and Siegel, who wrote powerful articles after the Alden decision contending that the qui tam approach (at least under the False Claims Act) is constitutional, acknowledge that the language in Alden looks the other way. See Caminker, supra note 113, at 95; Siegel, supra note 41, at 94. See also Vazquez, supra note 16, at 871 n.53.

(128.) Alden, 527 U.S. at 756. Professor Siegel suggests otherwise, contending that the United States as an artificial entity can act only through its agents, and that its agents need not be regular employees but can be private citizens authorized by act of Congress to bring suit. Siegel, supra note 41, at 85-87. Of course, on this basis, the private citizens in Alden can be viewed as having been authorized by Act of Congress to bring suit (although not formally on behalf of the United States), for Congress had clearly amended the Fair Labor Standards Act to purport to authorize private suits against the states. If congressional authorization suffices to make any authorized suit one for which the federal government is politically accountable, in the sense that Alden discussed accountability, then Alden itself should have come out the other way.

(129.) See Meltzer, Five Authors, supra note 1, at 1023-26.

(130.) See, e.g., Siegel, supra note 110, at 559-60 (contending that it should suffice that Congress has decided that the significant decision whether to sue a state by authorizing relators to do so, and that there is no constitutional basis for requiring that the decision be made in individual cases rather than by Congress for a set of cases); Caminker, supra note 113, at 120-26. Professor Caminker offers an empirical as well as a normative objection to the Court's position, doubting that "federal prosecutors ... would refrain from initiating an otherwise promising suit out of an abstract respect for the state's dignitary interests." Id. at 122. As I have said elsewhere,
   My own belief--based in part upon recollections from working at the
   Department of Health Education and Welfare in the Carter Administration--is
   that a broader view of federal enforcement would reveal a great deal more
   complexity than is found in Caminker's picture of prosecutors making
   discrete decisions whether a particular case is meritorious. In federal
   agencies, regulation frequently involves a complex of
   techniques--information gathering, informal oversight, notice of
   non-compliance, negotiation of remedial plans--and litigation is often a
   last resort. In that environment, deciding what is a "promising suit"--that
   is, an occasion for litigation rather than for other approaches to securing
   compliance--may not be clearcut. Additional unclarity about whether to
   bring a "promising suit"--for example, against Maine for violation of the
   FLSA--arises because such a decision is likely to implicate the question
   whether to allocate scarce resources to suing the state or, instead, to
   bringing a "promising suit" against a private regulatee.

   In making decisions that are, it seems to me, less open and shut than
   Caminker suggests, officials are often operating in a somewhat politicized
   environment. While Caminker's primary concern is with qui tam actions under
   the False Claims Act, in which the federal enforcers are located in the
   Justice Department, federal "prosecutors" often are not officials in the
   Department of Justice; the Department of Labor, for example, is the agency
   authorized to bring suit to enforce the FLSA. While efforts to influence
   Department of Justice officials may be viewed as particularly
   inappropriate, officials in an executive agency like the Department of
   Labor routinely are involved in discussion with both regulatees and with
   "political" actors in the Executive Office of the President or on Capitol
   Hill. In that environment, agency officials may not infrequently be wary of
   suing a state, not so much because of an abstract respect for state
   "dignity," but rather because they may have been subjected to, or fear
   becoming subject to, political pressure--whether directly from the states
   themselves, or indirectly through the intervention of other government
   officials who in turn are responding to state pressure.

   Having said this, I would note that my ... [claim]--that the political
   safeguards may operate in "broadly similar fashion" on legislative and
   executive officials--is not inconsistent with the view, which I would
   espouse, that the political culture of members of the House and the Senate,
   and of their staffs, is in general more responsive to political pressure
   from states than is that of officials in executive agencies. In that
   respect, the political safeguards may be more robust in the legislative
   than in the executive branch. In other respects, however, the political
   safeguards may be more effective in forestalling federal litigation than in
   forestalling federal legislation: in the legislative process, states may be
   less likely to have advance notice that adverse action is about to be
   taken, whereas a government lawsuit is likely to follow a crystallized
   dispute known to state officials; moreover, identification of a single
   critical decisionmaker with control over executive enforcement may be
   easier than identification in Congress of a particular legislator who
   plainly has the power to control a legislative outcome. More broadly,
   however, Caminker and I agree that, however one describes the behavior of
   executive enforcement officials, the Court in Alden fails to offer a
   convincing reason for permitting only federal officials to seek
   retrospective damages liability against unconsenting states for their
   violation of federal laws enacted under Article I.


Meltzer, Five Authors, supra note l, at 1023 n.55.

(131.) See Caminker, supra note 113, at 123-25; Gilles, supra note 116, at 1411; Meltzer, Five Authors, supra note 1, at 1024-25.

(132.) In his thoughtful article contending that the qui tam provisions of the False Claims Act do not violate the Eleventh Amendment, Professor Caminker notes a number of features of that qui tam provision that might not exist under an enforcement scheme for intellectual property laws that superimposed a qui tam mechanism on a scheme of private enforcement. First, he observes that "there is only one cause of action generated by any particular instance of fraud, and it belongs to the United States." Caminker, supra note 113, at 132. Second, he notes that suit is based upon an injury to the proprietary interests of the United States; "it is the United States and not any relator who is directly injured thereby, as the fraudulently obtained money is siphoned from the Federal Treasury." Id. Third, the entire or predominant share of recovery accrues to the United States. Id. at 132.

(133.) Caminker, supra note 113, at 134. Professor Siegel recognizes this difficulty, though he contends that a genuine qui tam action serves interests distinct from those served by private litigation--namely, the interest of the United States in effective enforcement--and that formal changes (from suit by private parties to suit by private relators on behalf of the United States) have significance in the law of sovereign immunity. Siegel, supra note 41, at 81-83.

(134.) The primary concern raised about qui tam actions has been the lack of complete control of executive officials over the litigation. At least under the False Claims Act, where the Attorney General has the power to intervene and take over the litigation, the most salient decision over which executive control is lacking is the initial power to bring suit or to terminate a suit once filed. The one circuit decision to hold the qui tam mechanism unconstitutional relied heavily on the government's lack of control over those aspects of the litigation. See Riley v. St. Luke's Episcopal Hosp., 196 F.3d 514, 523-29, reh'g en banc granted, 196 F.3d 561 (5th Cir. 1999). The argument that qui tam actions do not violate the separation of powers is supported by history, see Caminker, supra note 113, at 98-100, and also by a conception of the Take Care Clause as a duty to carry out congressional enforcement objectives, not a license to depart from them, see Caminker, supra note 120, at 356; Siegel, supra note 110, at 559-60. See also Peter M. Shane, Returning Separation-of-Powers Analysis to Its Normative Roots: The Constitutionality of Qui Tam Actions and Other Private Suits to Enforce Civil Fines, 30 ENVTL. L. REP. 11081 (2000). A different separation of powers concern--oppressive prosecution and lack of political accountability--is again mitigated by controls, and by the fact that qui tam relators have fewer resources and face economic constraints not faced by public officials and that such relators lack power to initiate criminal prosecutions. See Caminker, supra at 113, at 121-22.

A distinct separation of powers objection has been raised under the Appointments Clause, as relators are self-appointed. However, it may be a sufficient answer that they are neither officers with fixed tenure and primary responsibility nor responsible to another branch (and therefore pose no concern about aggrandizement); rather, they look more like agents of the government--although, one must admit, agents whose principal (the Attorney General) lacks the power to remove them altogether. See id. at 123-24.

All circuits other than the Fifth have rejected separation of powers attacks on the qui tam mechanism. See Gilles, supra note 116, at 1437 n.221 (collecting the decisions).

(135.) Such an approach would not surmount all practical difficulties--in particular, those relating to identification of the responsible officials and proving their individual responsibility. See text accompanying notes 94-106 supra.

(136.) The preclusion issue is a complicated one, to be sure. Under existing doctrine, there is authority to support the proposition that a governmental unit may be estopped by a prior judgment against an official of that government, at least when, as is commonly the case, the government participated substantially in the first litigation (for example, by managing the defense of the official). See, e.g., Duncan v. United States, 667 F.2d 36, 38 (Ct. Cl. 1981). Indeed, in Montana v. United States, 440 U.S. 147 (1979), the United States as plaintiff was held to be estopped from relitigating an issue that had been litigated in a prior lawsuit formally brought by a federal contractor, but which the United States had directed and financed. Accord United States v. Candelaria, 271 U.S. 432, 444 (1926) (stating in dictum that if the prior suit was prosecuted by an attorney specially employed by the United States, even though the United States was not a party, it may be concluded by the prior judgment). See also David L. Shapiro, State Courts and Federal Declaratory Judgments, 74 NW. U. L. REV. 759, 764 (1979).

The state might also seek to resist preclusion in a follow-up action by the United States on the ground that nonmutual issue preclusion should not be applied against a state government. In United States v. Mendoza, 464 U.S. 154 (1984), the Supreme Court held that "nonmutual offensive collateral estoppel simply does not apply against the [federal] government in such a way as to preclude relitigation of issues such as those involved in this case." Id. at 162. However, it is not clear that the approach of Mendoza does, or should, be extended from the federal government to state governments. See generally Nonmutual Issue Preclusion Against States, 109 HARV. L. REV. 792 (1996).

Moreover, even if Mendoza is applied to state governments, Mendoza's holding would not necessarily pose a barrier to the scheme described above. Courts have divided as to whether Mendoza's holding always forbids preclusion of the government or applies only to "issues such as those involved in this case." Mendoza, 464 U.S. at 162. See generally Michael Nathan Mills, Inequality Creates Exceptions: Limiting United States v. Mendoza to its Policy Rationale, 30 U.C. DAVIS L. REV. 889 (1997). If the rule against nonmutual preclusion of the government is not absolute, one might limit Mendoza by noting that the decision involved constitutional issues, applicable exclusively to the United States, that were of considerable public importance and generality, and that the Court's reasoning stressed that "[g]overnment litigation frequently involves legal questions of substantial public importance" and that permitting preclusion "would substantially thwart the development of important questions of law by freezing the first final decision rendered on a particular legal issue." 464 U.S. at 160. On a limited reading, Mendoza may not reach the situation that would be presented by the scheme described in the text: infringement litigation involves issues that tend to be fact specific, that do not necessarily have great public moment, and that might be relitigated in private litigation even were state governments precluded. See Mills, supra note 136, at 904-06; Shapiro, supra at 773. The argument that the scheme described in the text would not implicate Mendoza's rule is strengthened by the fact that under that scheme the second litigation would concern the same transaction as the first. That is quite a different matter from Mendoza itself, in which the argument for preclusion, if accepted, would have bound the government with regard to every transaction raising the same legal issue.

Finally, as a general matter the doctrine of Mendoza lacks constitutional foundations, and Congress could legislate to override it. In response, a state might object that whatever the basis for recognition or withdrawal of limits on preclusion of the United States, state sovereign immunity absolutely precludes the invocation of offensive issue preclusion against a state government based upon a prior judgment in an action against a state officer (to which immunity did not attach). That a government might in a second action be precluded by a prior judgment (because, for example, it had controlled the litigation) would not imply, a state might argue, that the government could not invoke sovereign immunity in the second action. Thus, were an intellectual property owner, having secured a judgment against a state official, thereafter to sue a state government for damages, the state would retain its immunity, even if it had fully participated in the prior litigation. One can concede that much, for it is a sufficient answer to the objection that under the scheme posited, the second action, because it was brought by the United States, would be one in which the state possessed no sovereign immunity.

Nonetheless, some dicta could be read to suggest that sovereign immunity limits the application of preclusion doctrine. In United States v. Lee, 106 U.S. 196 (1882), the Court, while upholding specific relief to oust federal officials from possession of real property, stated that "the United States cannot be made a defendant to a suit concerning its property, and no judgment in any suit against an individual who has possession or control of such property can bind or conclude the government." Id. at 222. That statement might be dismissed on the ground that it long preceded the recognition of non-mutual preclusion. However, in the more recent decision in Idaho v. Coeur d'Alene Tribe, 521 U.S. 261 (1997), Justice Souter's dissent reiterated a similar point. There, a majority of the Justices ruled that the Eleventh Amendment barred a federal court from issuing the particular form of specific relief against state officials there at issue. In his dissenting argument that such relief should be available and would not be unduly intrusive, Justice Sourer, stated that the state, "[i]f dissatisfied with a federal court's interpretation of federal law in a suit against its officers, ... may itself subsequently `bring any action that may be appropriate to establish and protect whatever claim it has to the premises in dispute.'" Id. at 305 (Sourer, J., dissenting) (quoting Tindal v. Wesley, 167 U.S. 204, 223 (1897)). Tindal, too, predates the recognition of nonmutual preclusion, and it is not clear that Justice Souter's efforts to suggest that the issuance of specific relief was a limited intervention should be read as recognizing a constitutional barrier to invocation of nonmutual preclusion. Indeed, in the parallel setting of suits against the United States, the Court of Claims has recognized that a prior judgment against federal officials, in which the United States participated, can provide the basis for offensive nonmutual preclusion in a second action against the United States itself that is not independently barred by sovereign immunity. See Duncan, 667 F.2d at 38.

(137.) Cf. note 119 supra.

(138.) The Supreme Court appears not to have addressed that issue directly. In Condon v. Reno, 155 F.3d 453 (4th Cir. 1998), rev'd, 528 U.S. 141 (2000), the Fourth Circuit read prior Supreme Court decisions as supporting the conclusion that congressional legislation under Article I that regulates the states is valid only if it also regulates private parties--and proceeded to invalidate the Driver's Privacy Protection Act in part because, in the court of appeals' view, that Act regulated only the states. See id. at 461-63. Before the Supreme Court, the question whether Congress' authority under Article I to regulate the states extends only to laws that also apply to private parties was much debated. In reversing the Fourth Circuit, however, the Supreme Court did not resolve the question, finding instead that the statute applied to private parties as well as to the states. See Reno v. Condon, 528 U.S. 141, 146 (2000).

(139.) 483 U.S. 203 (1987).

(140.) Id. at 206.

(141.) See New York v. United States, 505 U.S. 144 (1992).

(142.) See, e.g., Lynn A. Baker, Conditional Federal Spending after Lopez, 95 COLUM. L. REV. 1911, 1914 & n. 12 (1995); Candice Hoke, State Discretion Under New Federal Welfare Legislation: Illusion, Reality and a Federalism-Based Constitutional Challenge, 9 STAN. L. & POL'Y REV. 115 (1998); Ronald J. Krotoszynski, Jr., Listening to the "Sounds of Sovereignty" But Missing the Beat: Does the New Federalism Really Matter?, 32 IND. L. REV. 11 (1998). But see notes 157-158 infra.

(143.) See 483 U.S. at 207 (citing Pennhurst State Sch. & Hosp. v. Halderman, 451 U.S. 1, 17 & n.13 (1981)).

(144.) See id.

(145.) See id. (citing Halderman, 451 U.S. at 17).

(146.) See id. at 208.

(147.) See, e.g., Buckley v. Valeo, 424 U.S. 1, 90 (1976) (finding the "general welfare" requirement is a grant of power, not a limitation).

(148.) See Dole, 483 U.S. at 211 (citing Steward Mach. Co. v. Davis, 301 U.S. 548,590 (1937)).

(149.) See id.

(150.) See id. at 207-08; see also New York v. United States, 505 U.S. 144, 167 (1992) (citing Dole, 483 U.S. at 207-08 & n.3).

(151.) 527 U.S. 666 (1999).

(152.) 359 U.S. 275 (1959).

(153.) College Say. Bank, 527 U.S. at 686.

(154.) Id. at 686-87 (citations omitted).

(155.) 301 U.S. 548 (1937).

(156.) See, e.g., Kathleen M. Sullivan, Unconstitutional Conditions, 102 HARV. L. REV. 1413, 1428-56 (1989).

(157.) I say "standing" in view of the decision in Bradley v. Ark. Dep't of Educ., 189 F.3d 745 (8th Cir. 1999), vacated sub nom. Jim C. v. Ark. Dept. of Educ., 197 F.3d 958 (8th Cir. 1999). There, a panel of the Eighth Circuit held unconstitutional federal statutes providing that a state program or activity receiving federal financial assistance may not discriminate on the basis of disability, and that a state waives its sovereign immunity from suit for disability discrimination by virtue of receiving federal financial assistance. The panel decision in Bradley, interpreting federal law as making the price of receipt of any federal assistance a waiver of immunity in all state programs, found the spending condition to be so broad as to be coercive. See id. at 757-58.

That panel decision was vacated by the Eighth Circuit en banc, see Jim C. v. Ark. Dep't of Educ., 197 F.3d 958 (8th Cir. 1999), which reheard the appeal and, differing with the panel, upheld the validity of the spending condition. Jim C v. United States, 235 F.3d 1079 (8th Cir. 2000) (en banc) (8-4 decision). The en banc court first stressed that the spending conditions did not govern all activities of the state, as the panel had opined, but only those of the particular agency or department receiving the federal funds--here the Arkansas Department of Education. Id. at 1081. Turning from that statutory issue to the question of coercion under the spending power, the court, said: "The sacrifice of all federal education funds, approximately $250 million or 12 per cent. of the annual state education budget ..., would be politically painful, but we cannot say that it compels Arkansas's choice." Id. at 1082.

The four dissenters from the en banc decision found the condition, even as interpreted by the majority, to be coercive, contrasting the threatened loss of 100% of Arkansas's $250 million in federal education funding with the threatened loss, under the statute upheld in Dole, of only 5% of funds under the federal highway programs there at issue. The dissenters also found the condition overbroad in two respects. First, Congress was trying to do indirectly, through a spending condition, something (the prohibition of discrimination on the basis of disability) that, the dissenters asserted, it could not do directly. (The Supreme Court has since handed down the unsurprising ruling, by the unsurprising margin of 5-4, that Congress lacks power under Section 5 of the Fourteenth Amendment directly to prohibit discrimination by states on the basis of disability. See Board of Trs. of Univ. of Ala. v. Garrett, 121 S. Ct. 995 (2001).) Second, the dissenters argued that the spending condition (waiver of immunity, for the entire department, from suit for discrimination on the basis of disability) bears no relationship to the purpose of most federal grants to the education department, which is to improve educational quality; while Congress may condition grants to help disabled children upon a waiver of immunity from suit, it may not condition the

receipt of other, unrelated federal grants received by the state Department of Education upon such a waiver.

In one Fourth Circuit case, Judge Luttig, dissenting from the panel's decision, expressed the view that the federal government's efforts to impose conditions under a different federal spending program were unconstitutional. Virginia Dep't of Educ. v. Riley, 86 F.3d 1337, 1348 (4th Cir. 1996) (Luttig, J., dissenting), rev'd en banc, 106 F.3d 559 (1997) (per curiam). There, the federal government had withheld from the Commonwealth of Virginia 100% of an annual special education grant of $60 million on the ground that Virginia had violated the conditions governing the grant by failing to provide private educational services to 126 of the 128,000 handicapped students for whom the special education funds were earmarked. (The 126 had been expelled from school.) Id. Judge Luttig noted that on a pro rata basis, the 126 students would have received only $58,000 of the $60 million, and contended that while withholding the $58,000 for non-compliance would be lawful encouragement, withholding all $60 million "begins to resemble impermissible coercion." Id. at 1355 (Luttig, J., dissenting) (citing Dole, 483 U.S. at 211). He contrasted the condition in this case with the one at issue in Dole, under which the state was threatened with a loss of only 5% of federal highway funds for non-compliance with the spending condition. Id. at 1356 (Luttig, J., dissenting).

The en banc court overturned the panel decision and found the withdrawal of funds invalid, with six of the thirteen judges indicating that they did so on the basis of Judge Luttig's panel dissent. Thus, a majority of the court did not subscribe to Judge Luttig's contention that the spending condition constituted impermissible coercion. The en banc court's primary basis for invalidating the conditional spending program--a ground that commanded the assent of ten of the judges--was that Congress had not been sufficiently clear in conditioning the funding on compliance with the federal rules in question.

(158.) See, e.g., Kansas v. United States, 214 F.3d 1196, 1202 (10th Cir. 2000) (noting, in rejecting a coercion claim, that "the coercion theory is unclear, suspect, and has little precedent to supports its application"); see also Kimberly Sayers-Fay, Conditional Federal Spending: A Back Door to Enhanced Free Exercise Protection, 88 CAL. L. REV. 1281, 1300 (2000).

(159.) See Meltzer, Seminole Decision, supra note 1, at 54 n.249.

(160.) South Dakota v. Dole, 483 U.S. 203, 207-08 (1987) (quoting Massachusetts v. United States, 435 U.S. 444, 461 (1978) (plurality opinion)).

(161.) See New York v. United States, 505 U.S. 144, 167 (1992) (quoting Dole, 483 U.S. at 207-08 & n.3) (stating in dictum that a condition must "bear some relationship to the purpose of the federal spending").

(162.) See Thomas R. McCoy & Barry Friedman, Conditional Spending: Federalism's Trojan Horse, 1988 Sup. CT. REV. 85, 123 (arguing that relatedness is a contentless restriction); Sullivan, supra note 156, at 1436-37.

Although Chief Justice Rehnquist has generally voted to limit federal power in the major federalism cases, he wrote for the Court in Dole, upholding the conditional spending power. Some have suggested that his position on the spending power derives from a general affinity for "greater includes the lesser" arguments and his skepticism of unconstitutional conditions doctrine. See, e.g., Young, supra note 25, at 35 (noting Chief Justice Rehnquist's opposition generally to invocation of unconstitutional conditions doctrine); Sayers-Fay, supra note 158, at 1298-99.

(163.) A rare decision striking down a federal enactment on this ground is United States v. McCormack, 31 F. Supp. 2d 176 (D. Mass. 1998), which held unconstitutional an effort to bring a federal prosecution against a defendant charged with having bribed a local police officer. The police department had received federal funds, but the bribery pertained to the investigation of state crimes not related to the integrity of federal funding or to the programs that that funding was designed to support. In holding the criminal provision unconstitutional as applied, the district court did refer to Dole's relatedness requirement, finding that it was not satisfied. Id. at 187-89. See also United States v. DeLaurentis, 83 F. Supp. 2d 455 (D. N.J. 2000) (following a similar approach with regard to the same federal bribery statute). However, the case was an unusual one in that the Spending Clause argument was invoked to uphold not the validity of a condition imposed on a recipient of federal funds but rather direct regulation (via a criminal sanction) of a third party who did not seek or receive the funding in question.

In more conventional situations, involving challenges by states as recipients of federal grants, claims that grant conditions are unrelated to the purpose of the grant have generally been rejected, even where the connection is not particularly tight. See, e.g., Kansas v. United States, 214 F.3d 1196, 1197-98 (10th Cir. 2000) (upholding, as a condition on grants under the Temporary Assistance to Needy Families program, which gives federal block grants to states to provide cash assistance and other supportive services to low-income families, a condition requiring states to take a variety of steps relating to enforcement of child support orders).

(164.) Support for that argument might be found in Salinas v. United States, 522 U.S. 52 (1997). The case involved the interpretation and constitutionality, as applied, of 18 U.S.C. [sections] 666(a), which makes it a crime for any agent of a state governmental agency that receives more than $10,000 in federal assistance in a one-year period to accept a bribe. The Supreme Court unanimously rejected the defendant's view that the statute reached only those bribes that affect the federal funds received by the agency, and added that "there is no serious doubt about the constitutionality of [sections] 666(a)(1)(B) as applied to the facts of this case," noting that the person paying the bribe was a prisoner in a jail managed pursuant to a series of agreements with the Federal Government, and that the preferential treatment that he obtained from the officials whom he had bribed "was a threat to the integrity and proper operation of the federal program." Salinas, 522 U.S. at 60-61. The Court's constitutional discussion was quite brief, but it rejected a constitutional argument, made most forcefully in an amicus curiae brief, that "[p]unishing as federal felons local jail employees who come nowhere near federal funds (and probably did not know the jail's funding sources), and those who deal with such employees, is simply too attenuated from the purpose of [sections] 666--protecting federal funds--to pass muster as a proper exercise of the spending power." Brief of Amicus Curiae National Association of Criminal Defense Lawyers in Support of Petitioner, 1997 WL 174138, at 28 (1997) (No. 96-738).

(165.) After the Supreme Court held, in Grove City College v Bell, 465 U.S. 555 (1984), that only the particular college program that benefited from federal funds was required to comply with federal conditions prohibiting discrimination, Congress overrode the decision. See Civil Rights Restoration Act of 1987, Pub. L. No. 100-259, 102 Stat. 28 (1988) (providing a "program or activity" that receives federal funds--and that thus is subject to the accompanying anti-discrimination conditions--is defined to include "a department, agency, special purpose district, or other instrumentality of a State," or "the entity of such State ... that distributes such [federal funding]").

To be sure, a similar argument could extend to the state as a whole: federal funding for highways frees up state general revenues for education. Without suggesting that that argument is cleanly distinguishable from the one in text, I believe Congress would be unwise, given the strength of the Court's commitment to limiting national authority over the states, to push this approach that far.

(166.) For a recent, albeit divided, decision upholding such a program, see Jim C v. United States, 235 F.3d 1079 (8th Cir. 2000) (en banc), discussed in note 157 supra.

(167.) See, e.g., Daniel O. Conkle, Congressional Alternatives in the Wake of City of Boerne v. Flores: The (Limited) Role of Congress in Protecting Religious Freedom from State and Local Infringement, 20 U. ARK. LITTLE ROCK L.J. 633, 673-75 (1998); Sayers-Fay, supra note 158, at 1304 (arguing that such a strategy also risks resuscitating the coercion prohibition). For a careful discussion of the conditional spending approach that voices stronger doubts about its constitutional viability, see Berman, et al., supra note 14, at 1132-46.

(168.) 29 U.S.C. [sections] 794 (1994 & Supp. IV 1998).

(169.) 42 U.S.C. [sections] 2000d-1 (1994).

(170.) Both Acts contain global prohibitions on discrimination ([sections] 504 on the basis of disability, and Title VI on the basis of race, color or national origin) under "any program or activity receiving Federal financial assistance." 29 U.S.C. [sections] 794; see 42 U.S.C. [sections] 2000d-1.

(171.) For an example of a bill that adopts this general approach, see Title I of the Intellectual Property Protection Restoration Act of 1999, S. 1835, 106th Cong., 1st Sess. (1999).

(172.) An additional complication is that as to some intellectual property rights--notably copyrights--federal grants may have displaced pre-existing common law rights. See, e.g., Edward C. Walterscheid, To Promote the Progress of Science and Useful Arts: The Background and Origin of the Intellectual Property Clause of the United States Constitution, 2 J. INTELL. PROP. L. 1, 10-23 (1994). However, a government that traditionally has recognized a particular form of property right should not, in my view, be required to maintain that legal regime in perpetuity.

(173.) See, e.g., Sullivan, supra note 156, at 1416-17; Cass R. Sunstein, Why the Unconstitutional Conditions Doctrine is an Anachronism (with Particular Reference to Religion, Speech, and Abortion), 70 B.U.L. REV. 593,594 (1990).

(174.) In other contexts, the Court has drawn a constitutional distinction between federal grants--that is, gratuities under the spending power--and gratuities under other clauses. Thus, for example, in determining whether a taxpayer has standing to challenge federal action as a violation of the Establishment Clause, the Supreme Court distinguished federal grants under Article I, Section 8's Spending Clause--which taxpayers have standing to challenge--from federal transfers, under Article IV, Section 3, Clause 2's Property Clause, of valuable property for no consideration, which taxpayers lack standing to challenge. See Valley Forge Christian Coll. v. Ams. United for Separation of Church & State, Inc., 454 U.S. 464, 478-80 (1982) (distinguishing Flast v. Cohen, 392 U.S. 83 (1968)). This pair of decisions demonstrates that the Court is sometimes prepared to draw pointless distinctions when doing so serves its purposes. (By the same token, the congressional power to approve interstate compacts, see text accompanying note 154 supra, clearly could be viewed as somewhat sui generis.)

(175.) A recent en banc decision of the Eighth Circuit upheld a federal spending program that required the state Department of Education to waive immunity from suit for violation of federal rights as a condition of receiving federal grants. An earlier panel decision had found the spending condition to be coercive, on the assumption that acceptance of a federal grant required the entire state to submit to the grant conditions (a prohibition of discrimination on the basis of disability and an accompanying waiver of immunity). In upholding the spending conditions, the en banc court stressed that only the particular agency (here, the Department of Education) that receives the federal funds subjects itself to liability for discrimination on the basis of disability. The court did not reach the question whether the statute would be constitutional if it reached as broadly as the panel had believed. See Jim C v. United States, 235 F.3d 1079 (8th Cir. 2000) (en banc) (8-4 decision), discussed in note 157 supra.

(176.) 329 u.s. 565 (1947).

(177.) Id. at 573.

(178.) See id. at 573-74.

(179.) Schlossberg v. Maryland, 119 F.3d 1140, 1148 (4th Cir. 1997).

(180.) See HART & WECHSLER, supra note 80, at 1098 n.3.

(181.) Coll. Sav.s Bank v. Fla. Prepaid Postsecondary Educ. Expense Bd., 527 U.S. 666, 685 (1999) (quoting Welch v. Tex. Dep't of Highways & Pub. Transp., 483 U.S. 468, 477 (1987)).

(182.) See id. at 681 n.3 ("[Gardner], which held that a bankruptcy court can entertain a trustee's objections to a claim filed by a State, stands for the unremarkable proposition that a State waives its sovereign immunity by voluntarily invoking the jurisdiction of the federal courts.").

(183.) See Berman, et al., supra note 14, at 1075-79 (arguing that copyright infringement is likely to be the most common kind of intellectual property infringement on the part of states).

(184.) A less coercive, though less effective, alternative would be to try to put any non-waiving state, as a holder of intellectual property rights, in the same position as private parties suing states. On this view, the states would be authorized, at least with regard to new intellectual property rights, only to sue natural persons to prevent ongoing violations or for damages (subject to any qualified immunity that state officials would possess were they sued personally on a similar claim), but could not sue organizations for damages on a respondent superior theory.

(185.) See text accompanying note 138 supra.

(186.) It may be that in a small number of states waiver can be effected only through constitutional amendment. Compare, e.g., Beasley v. Ala. State Univ., 3 F. Supp. 2d 1304, 1322-25 (M.D. Ala. 1998) (holding that although ordinarily under the state constitution neither the Alabama state legislature nor state officials have power to waive immunity from suit, the acceptance of federal funds on the condition that the state waive immunity is a valid waiver governed by federal law) with, e.g., Univ. of W. Va. Bd. of Trs. v. Graf, 516 S.E.2d 741, 745 (W. Va. 1998) (per curiam) (holding, though not in the context of a state's acceptance of a conditional federal grant, that under the state constitution the legislature lacks power to waive state sovereign immunity).

(187.) Simpler still would be to follow the approach used in many conditional spending programs, which provide, with the requisite clear statement, that participation in the federal program (there by obtaining federal funds, here by applying for or obtaining a new intellectual property right) is deemed to constitute a waiver of immunity. See note 191 infra. It is not clear that this approach presents more constitutional difficulty than the affirmative waiver approach; under either one, a state might contend that a particular official was not authorized by state law to effect a waiver--whether the action taken by the official was simply applying for a new patent or was affirmatively declaring, in the patent application, that the state was waiving immunity. However, insofar as a court might be concerned about the prospect that the state could lose its sovereign immunity as the result of an isolated action by a low-level official who submitted an application on behalf of the state for an intellectual property right, there may be some value in requiring an affirmative waiver to be provided by an official (like the attorney general) who has broad responsibility and therefore is less likely to be viewed as not having the overall interests of the state in mind.

(188.) 323 U.S. 459 (1945).

(189.) Id. at 467.

(190.) See id. at 467-69.

(191.) See, e.g., Sandoval v. Hagan, 197 F.3d 484, 500 (11th Cir. 1999); Bradley v. Ark. Dep't of Educ., 189 F.3d 745,753 (8th Cir. 1999), vacated sub nom. Jim C. v. Ark. Dep't of Educ., 197 F.3d 958, on rehearing en banc, Jim C v. United States, 235 F.3d 1079 (8th Cir. 2000); Litman v. George Mason Univ., 186 F. 3d 544, 553-55 (4th Cir. 1999); Clark v. California, 123 F.3d 1267, 1271 (9th Cir. 1997).

I know of only one federal court of appeals decision that looked at whether the person or entity applying for federal funds was authorized to waive immunity, although on the facts the court found such authority. See Innes v. Kan. State Univ., 184 F.3d 1275, 1284 (10th Cir. 1999). However, one district court, applying similar analysis, found no valid waiver after determining that although the chief executive officer of the State Board of Regents signed a contract obligating the state to comply with the provisions of federal law--including a requirement that the state litigate certain issues in federal bankruptcy court--the officer lacked authority under state law to waive the state's immunity. See Snyder v. Nebraska, 228 B.R. 712, 718 (D. Neb. 1998).

(192.) A number of decisions inquire about the state Attorney General's authority and, finding it lacking, rule that no waiver of immunity occurred. See, e.g., Estate of Porter v. Illinois, 36 F. 3d 684, 691 (7th Cir. 1994); Silver v. Baggiano, 804 F.2d 1211, 1214-15 (11th Cir. 1986); Gwinn Area Cmty. Schs. v. Michigan, 741 F.2d 840, 846-47 (6th Cir. 1984). Other decisions make the same inquiry but have found authority to waive immunity to exist. See, e.g., Sutton v. Utah State Sch. for the Deaf & Blind, 173 F.3d 1226, 1235-36 (10th Cir. 1999); Newfield House, Inc. v. Mass. Dep't of Pub. Welfare, 651 F.2d 32, 36 n.3 (1st Cir. 1981).

A recent opinion by Justice Kennedy did suggest that the validity of a state official's waiver might, at least in some circumstances, be judged by a federal standard rather than under state law. In Wisconsin Department of Corrections v. Schacht, 524 U.S. 381 (1998), his concurring opinion discussed an issue not raised in the case or necessary to its disposition--whether a state that gives its express consent to removal of a case from state to federal court necessarily waives its Eleventh Amendment immunity from federal court suit. Id. at 393-98 (Kennedy, J., concurring). Recognizing that many lower courts had viewed the Ford Motor Co. decision as permitting a finding of waiver only when the state's attorney was authorized by state law to waive, and acknowledging that the Court's recent decisions had disfavored constructive waivers, Justice Kennedy nonetheless suggested that perhaps the act of removal should be deemed to be a waiver regardless of state law. See id. (Kennedy, J., concurring). However, he did not commit himself, nor did any of his colleagues join his opinion.

Moreover, his opinion, insofar as it advocates adoption of a federal standard to govern waiver, can be read as limited to the standard governing removal, rather than suggesting more broadly that waiver of immunity is always governed by a federal standard. Among other things, Justice Kennedy stressed the injustice of permitting the state to remove and then, should it lose, to raise the issue of immunity on appeal. See id. at 394-95 (Kennedy, J., concurring). The injustice of a state's acquiring an intellectual property right without being fully liable for violating the rights of others may not strike Justice Kennedy or his colleagues as being so obvious.

I personally am attracted to the argument that federal officials should be able to rely on representations by state officials that they are authorized to take particular action, including waiving immunity, and that unless it is plain that an official lacks such authority, an act that a federal statute unambiguously deems to be a waiver should have that effect. But cf Office of Pers. Mgmt. v. Richmond, 496 U.S. 414, 421-24 (1990) (noting considerable authority suggesting that the United States may not be estopped by the unauthorized action of its agent). Under that approach, the task of policing officials to be sure that they are authorized to waive would fall to the states for which they work rather than to federal officials or federal courts.

(193.) I do not think the state legislation model more troublesome because that which it requires--the enactment of legislation--is more intrusive. First, as already noted, South Dakota v. Dole upheld conditional spending where the condition imposed required states to pass legislation in order to obtain federal funding. And while New York v. United States did invalidate a statute that presented the state with two alternatives--commandeering or taking title--both of which the Supreme Court deemed to be unconstitutional, the New York decision specifically distinguished Dole. The New York Court said that its holding
   is not to say that Congress lacks the ability to encourage a State to
   regulate in a particular way, or that Congress may not hold out incentives
   to the States as a method of influencing a State's policy choices. Our
   cases have identified a variety of methods, short of outright coercion, by
   which Congress may urge a State to adopt a legislative program consistent
   with federal interests.


505 U.S. 144, 166 (1992).

The New York Court added that "[w]here the recipient of federal funds is a State, as is not unusual today, the conditions attached to the funds by Congress may influence a State's legislative choices." See id. at 167 (citing Dole as an example). Similarly, last Term, in Reno v. Condon, 528 U.S. 141 (2000), the Court unanimously reaffirmed the statement in South Carolina v. Baker, 485 U.S. 505 (1988), that the fact "[t]hat a State wishing to engage in certain activity must take administrative and sometimes legislative action to comply with federal standards regulating that activity is a commonplace that presents no constitutional defect." 528 U.S. at 150-51 (quoting South Carolina v. Baker, 485 U.S. 505, 506 (1988)).

Moreover, the notion that the state legislation approach is more intrusive seems mistaken analytically. If the affirmative declaration approach requires that a state official must previously have been authorized by state statute to waive on behalf of the state, then that approach in the end also requires enactment of legislation.

(194.) Significantly, the Supreme Court is not averse to making the suability under federal law of state or local governmental entities depend upon the distribution of governmental authority under state law. See, e.g., City of St. Louis v. Praprotnik, 485 U.S. 112, 124-25 (1988) (holding that whether a municipal official's decision provides the basis for establishing municipal liability under 42 U.S.C. [sections] 1983 depends upon whether state law gives him policymaking authority); McMillian v. Monroe County, 520 U.S. 781, 786-93 (1997) (in a federal action under [sections] 1983, the question whether the actions of a county sheriff should be attributed to the county (thus permitting suit) or the state (in which case suit would be unavailable) depends on state law).

(195.) Indeed, if the waiver demanded is very broad--for example, by providing that one state official, by applying for a new intellectual property right, waives the state's immunity from liability under all schemes of intellectual property regulation--the Supreme Court might be particularly hesitant to uphold a waiver of immunity without ensuring that the official was duly authorized. For there may be disagreements among departments of a state government on the question whether securing new intellectual property rights is more valuable than preserving immunity from suit for violating the rights of others, and the Court might well think it preferable that such disagreements be resolved in the state legislature.

(196.) 29 U.S.C [subsections] 201-219 (1994).

(197.) 29 U.S.C. [sections] 621 (1994 & Supp. IV 1998); see Kimel v. Fla. Bd. of Regents, 528 U.S. 62 (2000).

(198.) 45 U.S.C. [subsections] 51-60 (1994).

(199.)See, e.g., Meltzer, Seminole Decision, supra note 1, at 32-33 & nn.149-50.

(200.)Meltzer, Seminole Decision, supra note 1, at 62.

(201.)The statement also requires a minor (at least as present) revision to take account of the decision in Idaho v. Coeur d'Alene Tribe, 521 U.S. 261 (1997), which restricted the availability even of relief that must be viewed as prospective, in the somewhat limited and unusual circumstances in which the plaintiff Indian Tribe sought possession of real property (submerged land), and the Court refused to award relief against state officers, viewing such an award as tantamount to divesting the state of sovereignty over the lands in question.

(202.) Meltzer, Seminole Decision, supra note 1, at 62.

Daniel J, Meltzer, Story Professor of Law, Harvard Law School. This article draws on a written statement that I prepared in connection with testimony given before the Subcommittee on Courts and Intellectual Property of the House Committee on the Judiciary at its July 27, 2000 oversight hearing on "State Sovereign Immunity and Protection of Intellectual Property." Shortly after that hearing, that statement was "published" on the Subcommittee's web site. See www.house.gov/judiciary/4.htm.

I am grateful to Joshua Berman, Gil Seinfeld, Rebecca Gelfond, and Anne Lipton, 2000 graduates of the Harvard Law School, and to Anne Small, 2001, for their extremely helpful research. I am also grateful to those individuals, and to Marci Hamilton, Larry Kramer, David Shapiro, and Ernie Young, for helpful comments. Research for this article was supported by the Harvard Law School Summer Research Program.
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Author:Meltzer, Daniel J.
Publication:Stanford Law Review
Geographic Code:1USA
Date:May 1, 2001
Words:35461
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