6 Va. J.L. & Tech. 1 (2001), at http://www.vjolt.net
1522-1687 / 2001
Virginia Journal of Law and Technology Association
VIRGINIA JOURNAL of LAW and TECHNOLOGY
|
UNIVERSITY OF VIRGINIA |
SPRING 2001 |
6 VA. J.L. & TECH. 1 |
Patently Absurd:
Expanded State Immunity in
the Global Knowledge Market
By Yvonne A. Tamayo[1]
“We live in a knowledge economy and patents are its foundation.”[2]
I. Introduction
II. The Eleventh Amendment and State Immunity
III. Florida Prepaid and Its Implications
IV. Implications Of Florida Prepaid in the Current “Knowledge” Economy
V. Conclusion
1.
Recent Eleventh Amendment jurisprudence reflects an increasingly
pronounced protective vigilance by a majority of the Supreme Court[3]
over states’ sovereign immunity.[4] This posture has resulted in a
frustration of Congressional attempts to render states amenable to suit in
federal court through immunity abrogation provisions in federal patent and
trademark legislation as well as through other types of legislation.[5]
The Supreme Court’s concern to protect states’ sovereignty was particularly
evident in Florida Prepaid Postsecondary Educational Expense Board v.
College Savings Bank.[6]
In that case, even though Congress had explicitly
indicated its intent to waive the states’ immunity from suit, the United States
Supreme Court held that sovereign immunity shields states from suit in federal
court for infringement of patent interests otherwise protected under the Patent
and Plant Variety Protection Remedy Clarification Act (“Patent Remedy Act”).[7]
2.
This article will argue that the direction taken by the Supreme Court in
Florida Prepaid and in other recent cases in which the Court has
interpreted the Eleventh Amendment marks an ill-founded and most unfortunate
departure from traditional Eleventh Amendment analysis.[8] Section II will provide a short history
of the evolution of Eleventh Amendment doctrine from its beginnings to the
present. Section III will examine
the holding of Florida Prepaid.
Section IV will provide discussion of the recent marked increase in
states’ use of patent protection, and will point to the inequity produced when
a state may sue an individual or business entity to obtain a remedy for
infringement of the states’ patent, but an individual or business entity may
not enjoy the same right to be protected against infringement by the state. It will be urged that the recent turn
of the Supreme Court privileges states in ways that are patently unfair and
unworkable in the contemporary knowledge economy.
II. The
Eleventh Amendment and State Immunity
3.
Preliminary to evaluating the Supreme Court’s recent holdings regarding
state immunity, it is essential to review the history of Eleventh Amendment
interpretation. In 1795, Congress
passed the Eleventh Amendment in a swift response to the Supreme Court’s
decision in Chisholm v. Georgia that a citizen of South Carolina could
sue the state of Georgia in federal court to collect monies owed for provisions
sold to Georgia during the Revolutionary War.[9]
The Eleventh Amendment swiftly overturned Chisholm, prohibiting federal
court jurisdiction over suits brought by citizens of one state against another
state.[10] Although the plain language of the
Eleventh Amendment applies only to actions brought against a state by a citizen
of another state, the Supreme Court has interpreted the amendment more broadly. In 1890, the Supreme Court applied the
Eleventh Amendment expansively in Hans v. Louisiana when it held that
state citizens could not sue their own states in federal court.[11]
This interpretation of the Eleventh Amendment avoided the anomaly of allowing
citizens of a state, but not citizens of other states, to sue the state in
federal court.[12]
4.
In Ex parte Young, the Supreme Court further construed the
Eleventh Amendment to allow suits against state officers by creating a legal
“fiction” circumventing state sovereign immunity.[13] There, the Court
held that a suit alleging that a state officer acted illegally, and personally
naming the state official as defendant, was not an action against the state and
was permissible to allow a plaintiff to recover prospective injunctive relief
against the officer.[14]
In Parden v. Terminal Railway Co., the Court narrowed the application of
the Eleventh Amendment and held that states could constructively waive their
sovereign immunity by engaging in ordinary commercial activities not within
their core sovereign powers.[15]
In 1976, the Supreme Court further decreed in Fitzpatrick v. Bitzer that
in certain circumstances, Congress could authorize individuals to sue a state
in federal court.[16]
There, the Court held that Congress could abrogate states’ sovereign immunity
when acting pursuant to its enforcement powers under section 5 of the
Fourteenth Amendment.[17]
5.
In 1985, however, the Court announced the “clear statement” rule in Atascadero
State Hospital v. Scanlon.[18]
The Court in Atascadero held that Congress must express its intent to abrogate
the states’ Eleventh Amendment immunity using “unmistakable language in the
statute itself.”[19]
Four years later in Pennsylvania v. Union Gas Company, the Court allowed
Congress to abrogate Eleventh Amendment immunity through legislation passed
pursuant to the Commerce Clause, upon a finding that Congress had explicitly
stated its intent to authorize suits against state governments.[20]
6.
In 1996, by a five-to-four vote, the Supreme Court in Seminole Tribe
of Florida v. Florida reversed its earlier decision in Union Gas and
held that Congress lacked authority under Article I of the Constitution to
abrogate the states’ Eleventh Amendment immunity from suit in federal court.[21]
The Court, however, reaffirmed its holding in Fitzpatrick v. Bitzer,[22]
that Congress had the power to abrogate state sovereignty under Section 5 of
the Fourteenth Amendment.[23]
Under Seminole, Congress may abrogate a state’s Eleventh Amendment
immunity if Congress unequivocally expressed its intent to abrogate such
immunity, and if it also acted pursuant to a valid exercise of power.[24]
7.
One year later in 1997, the Supreme Court decided City of Boerne
v. Flores and held that Congress cannot abrogate states’ sovereign immunity
under Section 5 unless the abrogating legislation deters or remedies
unconstitutional state conduct.[25] Legislation that is “appropriate” under
Boerne must be tailored to reflect a congruence and proportionality
between the identified injury and the means adopted to remedy the offending
conduct.[26]
On the same day that the court decided Florida Prepaid in 1999, the
Court found in College Savings Bank v. Florida Prepaid Postsecondary
Educational Expense Board that the Federal Trademark Remedy Clarification
Act was not “appropriate legislation” under Section 5 of the Fourteenth
Amendment to abrogate Florida’s Eleventh Amendment sovereign immunity
protection, because the statute did not protect “property rights” within the
meaning of the Fourteenth Amendment.[27]
8.
Two months after its companion decisions in Florida Prepaid and College
Savings, the Supreme Court once again barred a suit against a state on the
basis of state sovereign immunity.
In Alden v. Maine, the Court held that the principle of sovereign
immunity underlying the Eleventh Amendment also operates as a bar to suit
brought against states in state court.[28] On January 11,
2000, the Supreme Court continued its “states’ rights” judicial journey by
finding in Kimel v. Florida Board of Regents that although the Age
Discrimination in Employment Act contained a clear statement of intent to
abrogate states’ sovereign immunity, the abrogation provision exceeded
Congress’ authority under Section 5 of the Fourteenth Amendment.[29]
III. Florida Prepaid and Its Implications
9.
In order to fully appreciate the context within which the Court’s
decision in Florida Prepaid arose, a brief description of the events
leading to the Patent and Plant Variety Protection Remedy Clarification Act
(the Patent Remedy Act) is appropriate.
In 1985, the Supreme Court held in Atascadero State Hospital v.
Scanlon that Congress must express its intention to abrogate the states’
Eleventh Amendment immunity in “clear and unmistakable language.”[30]
In 1990, the Federal Circuit decided two cases, Chew v. California[31]
and Jacobs Wind Elec. Co. v. Florida Dept. of Transportation,[32]
in which it upheld the states’ Eleventh Amendment immunity from patent suits in
federal court on the basis that Congress did not adequately express its intent
to abrogate the states’ sovereign immunity as required in Atascadero.[33]
10. In
response to the Chew and Jacobs decisions, Congress passed the
Patent Remedy Act in 1992, making explicit its intent to abrogate states’
sovereign immunity.[34] This amendment to the Patent Code
abrogated the states’ Eleventh Amendment immunity from patent suits brought in
federal court, and exposed states to the same legal and equitable remedies
already available against entities other than states.[35]
11. In
Florida Prepaid, College Savings Bank alleged that Florida Prepaid’s
tuition prepayment program infringed its patent under the Patent Remedy Act,
and sued for declaratory and injunctive relief, as well as money damages, attorney’s
fees, and costs.[36]
Florida Prepaid is a Florida state agency that administers a prepaid college
tuition program.[37]
The program, begun in 1988, allows Florida residents or their children to pay
at current prices for the children’s future college education.[38]
From its inception until 1999, Florida Prepaid sold over 500,000 prepaid
college and dormitory contracts.[39]
12. College Savings Bank was a New Jersey bank that sold certificates of deposit known as the “CollegeSure CD” to investors financing the future costs of their children’s college education.[40] On January 26, 1988, College Savings Bank was assigned United States Patent No. 4,722,055 (the “055” patent), entitled “Methods and Apparatus for Funding Future Liability of Uncertain Cost.”[41] The patent protects College Savings Bank’s calculation methodology for guaranteeing investors sufficient funds to meet their college expenses at a future date.[42] College Savings Bank described the patent as follows:
[T]he...
invention... provid[es] a data processing system which implements an insurance
investment program that combines the risk reduction advantages of a mutual fund
with the protection advantages of an insurance policy, and moreover provides
protection for a future liability of uncertain cost... The system also provides for the
management of the fund of invested premiums so that the yield of the fund at
least matches the increase in cost of the insured liability and so that the
cash flow from the fund is adequate for funding the programs liabilities at
their predetermined maturity dates.
The system periodically processes investor transactions to update the
program funds asset positions, provides information to the program manager to
help him evaluate options for the purchase and sale of assets, and provides
reports to the program manager and to the investors regarding income generated
by the fund.[43]
13. On
November 7, 1994, College Savings Bank sued Florida Prepaid in the United States
District Court for the District of New Jersey for patent infringement under the
Patent Remedy Act.[44] Florida Prepaid moved to dismiss the
claim, arguing that under the Supreme Court’s ruling in Seminole Tribe of
Florida v. Florida,[45][46]
the Patent Remedy Act was an unconstitutional attempt by Congress to abrogate
state sovereign immunity under the Patent Clause of Article I of the
Constitution.[47] Finding that Congress had acted
pursuant to a valid exercise of power under the Fourteenth Amendment, the district
court denied Florida Prepaid’s motion to dismiss.[48] The Federal
Circuit affirmed the district court’s decision, and held that Congress, having
clearly expressed its intent to abrogate the state’s immunity from suit in
federal court for patent infringement, had the power to abrogate such immunity
under the enforcement provision of the Fourteenth Amendment.[49]
Florida Prepaid appealed the Federal Circuit’s decision, and the United States
Supreme Court granted certiorari.[50]
14. On
June 23, 1999, the Supreme Court held in Florida Prepaid that the
Fourteenth Amendment did not authorize Congress to abrogate Florida’s sovereign
immunity to suit in federal court.[52] In considering
whether Congress’ abrogation of the states’ sovereign immunity under the Patent
Remedy Act was a valid exercise of its enforcement powers to secure Fourteenth
Amendment protection for patentees, Justice Rehnquist, writing for the
majority, considered the test the Court enunciated in Seminole Tribe v.
Florida[53]
for abrogation of sovereign immunity claims. Seminole’s first requirement is that Congress have
unequivocally expressed its intent to abrogate the states’ immunity.[54] In Florida Prepaid, the Court
found that the Patent Remedy Act in fact contained “unmistakably clear”
language espousing Congress’ intention to abrogate the states’ immunity.[55]
15. The
Court then specified that the subject legislation will be deemed “appropriate”
if it reflects a congruence and proportionality between the injury alleged and
the measures adopted to remedy the wrong.[56] In applying the
“appropriateness” test to the Patent Remedy Act, the Florida Prepaid
Court found that Congress had not produced a legislative record establishing a
history of unremedied, widespread, and persisting patent infringement by the
states.[57]
Congress, the Court noted, had not fully considered the availability of state
remedies for patent infringement,[58]
and Congressional testimony established instead that state remedies were less
convenient than federal remedies, and might undermine the uniformity of patent
law.[59] The Court further explained that a
state’s negligent act causing unintended property injury did not “deprive” that
person of property within the meaning of the Due Process Clause.[60]
Based on its finding that the abrogation provision was a disproportionate
response to a small number of state patent infringements not conclusively
violative of the patentees’ constitutional rights, the Court in Florida
Prepaid held that the Patent Remedy Act was not appropriate remedial
legislation under section 5 of the Fourteenth Amendment.[61]
16. Concurrent
with its reinforcing the states’ sovereignty against federal court litigation,
the Court has infused recent Eleventh Amendment opinions with a curious subtext
ascribing “human” qualities to the states. This personification of the states heralds the states’
“dignity” as an important interest of state sovereign immunity.[62] On this topic, the Court has stressed
that one purpose of the Eleventh Amendment is to vindicate the states’ dignity[63]
from offense by “unduly burden[some] litigation” brought by a private party
against it in federal court.[64] The Court’s concept of the state as
quasi-person, however, does not wholly encompass the contours of its concern
that states be treated respectfully.
To this end, the Court recently described a state’s waiver of sovereign
immunity as a “personal” privilege similar to citizens’ rights to waive counsel
and to have a trial by jury.[65]
17. Most notably, states are to be treated specially and with deference, even if they act identically to private business entities. In College Savings Bank v. Florida Prepaid Postsecondary Educational Expense Board,[66] Justice Scalia wrote:
...(A) suit by an individual against
an unconsenting State is the very evil at which the Eleventh Amendment is
directed- and it exists whether or not the State is acting for profit, in a
traditionally “private” enterprise, and as a “market participant.” In the sovereign- immunity context,
moreover, “[e]venhandedness” between individuals and States is not to be
expected....[67]
18. This projection of human traits onto the states has been further developed by the Supreme Court in its recent espousal of the view that reliance on the states’ good faith is a viable mechanism for enforcing their obligation to comply with federal law. In Alden v. Maine, Justice Kennedy, writing for the majority, stated:
We are unwilling
to assume the States will refuse to honor the Constitution or obey the binding
laws of the United States. The
good faith of the States thus provides an important assurance that “this
Constitution, and the Laws of the United States which shall be made in
Pursuance thereof... shall be the supreme Law of the Land.”[68]
19. This present-day judicial reliance on the states’ “good faith” resonates in its polarity with the concerns of the drafters of the Constitution. Indeed, with respect to the states’ good faith being insufficient to ensure their compliance with national legislation, Alexander Hamilton commented:
There was a time
when we were told that breaches by the States of the regulations of the federal
authority were not to be expected; that a sense of common interest would
preside over the conduct of the respective members, and would beget a full
compliance with all the constitutional requisitions of the Union. This language.... betrayed an ignorance
of the true springs by which human conduct is actuated, and belied the original
inducements to the establishment of civil power. Why has government been instituted at all? Because the passions of men will not
conform to the dictates of reason and justice without constraint.[69]
20. Judicial expectations that the state “sovereign” will govern itself and refrain from infringing the rights of patentholders seem remarkably naive. They appear to anticipate the unlikely development that the state will maintain an exquisite governmental demeanor displaying impeccable restraint, even when it is functioning as a “market participant” in a market rife with seductively profitable business opportunities. This uncertainly-grounded paradigm for protecting patentees’ rights, in contrast to the comprehensive fluidity of the national and international market in which patented ideas and products flow, is clearly inadequate in its lack of uniformity, reliability, and consistency.
IV. Implications of Florida Prepaid in the Current “Knowledge” Economy
21. The
Supreme Court’s decision in Florida Prepaid[70] is particularly significant
because it immunizes states from private lawsuits seeking money damages for
patent infringement at a time when the increasing value of patents makes such
infringement a lucrative activity.[71] As patents mirror
the current transformation of America’s economy from one that values raw
materials and manufactured goods to one driven by ideas, knowledge and
information, the applicability of patents has transcended a market in which,
historically, patents ensured rights to inventions that had form and substance,
and were perceptible by touch.[72]
As a result, many patents now protect a much broader scope of products, both
tangible and intangible, than in prior years.[73]
22. The
increase in the number of patent applications during the years 1998 to 2000 confirms
that patents have become a business property capable of independently
augmenting a company’s worth.[74] The increased patent holdings of
leading technology companies are also exemplary of the rising value of patents. One example is Microsoft, which possessed
only one patent in 1990.[75]
In 1999, Microsoft owned approximately 800 patents.[76] Sun, Oracle,
Novell, Dell, and Intel have similarly each increased their patent acquisitions
by over 500 percent in the last few years.[77] Also in 1999, the United States Patent
and Trademark Office received more than 288,000 patent applications,
representing a ten percent increase over filings in 1998.[78] In the year 2000,
the patent office expected an additional twelve to fourteen percent increase in
patent applications.[79]
23. Along
with the evolution of patents into extremely valuable business assets,
individual states have enthusiastically increased their activity in the
national economy both as patentees and as users of others’ patents. For example, between 1995 and 1997, the
United States Patent and Trademark Office granted over two hundred patents to
Florida’s public universities.[80]
Those patents spanned a broad and varied range of subject matter including
insect repellents, reinforced plastic concrete, needles, semiconductor
circuits, lasers, computer software, projection screens, nuclear imaging, air
conditioning, diamond manufacture, food processing, and methods for the
synthesis of various chemicals.[81]
24. Florida’s
holding of patents in joint ownership with private companies, both domestic and
foreign, provides a strong example of the state functioning as market
participant.[82]
In addition to its active acquisition of patents, Florida fosters and protects
its patent ownership by specifically authorizing its public universities to
obtain, license, and market their patented technologies, and to file lawsuits
against infringers of the state’s patents.[83] Florida is also
exemplary of numerous other states that not only participate in commercial
activities involving the use of patents, but subsequently become plaintiffs in
patent infringement actions against private parties.[84] All of these
developments evidence the broad and encompassing nature of the Supreme Court’s
holding in Florida Prepaid.
25. The
impact of the Florida Prepaid decision restricting patentees to state
court remedies is particularly troubling in light of Congressional directives
on patent jurisdiction revealing an important federal interest in achieving and
maintaining uniformity in the interpretation and application of patent laws.[85]
Originally, the framers of the Constitution gave Congress authority over patent
and copyright law in order to promote the research and development of
inventions in the area of science and related fields by securing individuals’
rights to their novel ideas.[86]
In 1948, Congress subsequently granted the federal courts exclusive
jurisdiction over patent, copyright and trademark infringement actions.[87]
Further recognizing the importance of a coherent and uniform body of law in
this area of law, Congress consolidated patent appellate jurisdiction from the
federal circuits to the Court of Appeals for the Federal Circuit in 1982.[88]
26. The
Court’s decision in Florida Prepaid clearly undermines the federal
interest in uniformity of patent laws and remedies because it restricts a
plaintiff to remedies varying in scope and availability from state to state. West Virginia, for example, prohibits
lawsuits against the state in state court.[89] Colorado and
Maine, on the other hand, have statutory provisions authorizing waiver of
sovereign immunity in limited circumstances, but these circumstances do not
include patent infringement.[90]
27. The
uncertainty caused by Florida Prepaid in the provision of remedies to a
plaintiff who sues a state is exacerbated by the Court’s recent ruling in Alden
v. Maine that Congress has no greater power to subject a state to suit
under federal law in state court than in federal court.[91] After Alden, it is uncertain if a state
court is obligated to hear patent infringement actions against the state. However, even if a state’s forum is
available in this context, concerns about state court impartiality will arise,
as evidenced by the constitutional and statutory authorization for diversity
actions and state court suits removable to federal court.[92]
28. Florida’s
activities in the marketplace, indistinguishable in form and scope from those
of private entities, render outdated and unworkable the Court’s nostalgic
imagery of states needing to be protected by the conceptual cloak of
sovereignty against “undignified” private-plaintiff litigation. To this end, the dissenting voices in Florida
Prepaid v. College Savings Bank,[93] College Savings
Bank v. Florida Prepaid[94]
and Alden v. Maine[95]
reflect a keen awareness of the dramatically changed nature of a global
economic reality. In Florida
Prepaid, Justice Stevens pointed out that the Patent Remedy Act will
“expand in precise harmony” as states increase their involvement with patents
in the commercial arena.[96]
In College Savings Bank, Justice Stevens further critiqued the Court’s
present-day invocation of 18th century sovereign immunity doctrine, because
“[s]overeigns did not then play the kind of role in the commercial marketplace
that they do today.”[97] In Alden, Justice Souter argued
against equating the States with royalty, stating that “[i]t would be hard to
imagine anything inimical to the republican conception, which rests on the
understanding of its citizens precisely that the government is not above them,
but of them, its actions being governed by law just like their own.”[98]
29. Although the Court has elsewhere acknowledged the information revolution occurring in the world’s economy, its ruling in Florida Prepaid demonstrates a startlingly inadequate understanding of the importance of consistent and effective enforcement provisions for protecting the ideas, information, and knowledge contained in patentable inventions.[99] This retrogressive approach to states’ sovereign immunity raises concerns for the future. In the coming term, the Supreme Court will hear the case of University of Alabama at Birmingham Bd. of Trustees v. Garrett, where two state employees brought an action under the Americans with Disabilities Act (“ADA”) against their state agency employer.[100] In University of Alabama, the Court will decide whether the ADA exceeds Congress’ enforcement authority under section 5 of the Fourteenth Amendment as applied to the states.[101] Clearly, the Court’s decision on the states’ sovereign immunity from claims brought under the ADA will impact thousands of state employees nationally as well as numerous disabled persons receiving state benefits.
30. Federal
patent regulation advances the aims of promoting inventions, and protecting the
interests of inventors in their unique products.[102] These goals are best served by ensuring
the availability of a competent, a knowledgeable and an impartial forum where a
patentholder may seek adequate remedies to enforce his exclusive right to a
patent. As the states intensify
their involvement with patented products, it will become increasingly unfair to
force patentees to rely on a state’s good faith voluntary compliance with
federal patent laws and to seek remedies in state court when the state breaches
that standard. It is clear that
without threat of significant legal sanctions, the likelihood of patent
infringement will increase, particularly when it provides a substantial
financial bounty to the state.
[1] Assistant Professor, Willamette University College of Law; J.D., Loyola University School of Law; B.S., Louisiana State University. I wish to thank Marie Ashe and Abbey Vanderbeek for their help and support. I also wish to thank Vince Chiappetta for his helpful comments, and Jonathan Clark, Kimber Davis, Trig Falkenberg, Ed Hoeffliger, and Shelley Strong for their able research assistance. Financial support for this research was provided by the Willamette University College of Law.
[2] Electronic Engineering Times, “Tech Groups Fight Patent Office Cutbacks” (June 19, 2000), available at 2000 WL 22238950 (quoting Alexander Poltorak, chairman and chief executive officer of General Patent Corp. International).
[3] Justices Rehnquist, O’Connor, Scalia, Kennedy and Thomas have voted as a bloc in extending sovereign immunity to states in the following cases: Alden v. Maine, 527 U.S. 706, 119 S.Ct. 2240 (2000); College Savings Bank v. Florida Prepaid Postsecondary Educational Expense Board, 527 U.S. 666, 119 S.Ct. 2219 (1999); Florida Prepaid Postsecondary Educational Expense Board v. College Savings Bank, 527 U.S. 627, 119 S.Ct. 2199 (1999); Idaho v. Coeur d’Alene Tribe, 521 U.S. 261, 117 S.Ct. 2028 (1997); Seminole Tribe of Florida v. Florida, 517 U.S. 44, 116 S.Ct. 1114 (1996).
[4] In its earliest appearance in Anglo-American law, sovereign immunity was recognized as a royal privilege immunizing the British sovereign from having to defend a legal action against himself, based on the concept that “the King can do no wrong because the law ascribes to the King... certain attributes of a great and transcendent nature; by which the people are led to consider him in the light of a superior being, and to pay him that awful respect, which may enable him with greater ease to carry on the business of government.”1 W. Blackstone, Commentaries 241, 244.
[5] See College Savings Bank v. Florida Prepaid Postsecondary Educ. Expense Bd., 527 U.S. 666 (1999) (invalidating the Trademark Remedy Clarification Act as applied to states because the interests Congress sought to protect were not recognized by the Court as constitutionally protected); Florida Prepaid Postsecondary Educ. Expense Bd. v. College Savings Bank, 527 U.S. 627 (invalidating the Plant Variety Protection Act as applied to states because the legislation was disproportionate to the scant evidence of injury found by Congress); City of Boerne v. Flores, 521 U.S. 507 (1997) (invalidating the Religious Freedom Restoration Act of 1993); Board of Trustees v. Garrett, 121 S.Ct. 955 (2001)(Congress did not validly abrogate state immunity to suit under the Americans With Disabilities Act because no state pattern of widespread constitutional violations established); Kimel v. Florida Board of Regents, 528 U.S. 62 (2000) (invalidating the Age Discrimination in Employment Act as applied to states because Congress exceeded its enforcement authority); Alden v. Maine, 527 U.S. 706 (1999) (invalidating the Fair Labor Standards Act as applied to states because Congress had no authority to abrogate state sovereign immunity).
[6] 527 U.S. 627 (1999).
[7] The
Patent and Plant Variety Protection Remedy Clarification Act, 35 U.S.C. 271(a),
provides in pertinent part:
(a) Except as otherwise provided in this title, whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States or imports into the United States any patented invention during the term of the patent therefore, infringes the patent.
(b) Whoever actively induces infringement of a patent shall be liable as an infringer.
(c) Whoever offers to sell or sells within the United States
or imports into the United States a component of a patented machine,
manufacture, combination or composition, or a material or apparatus for use in
practicing a patented process, constituting a material part of the invention,
knowing the same to be especially made or especially adapted for use in an
infringement of such patent, and not a staple article or commodity of commerce
suitable for substantial noninfringing use, shall be liable as a contributory
infringer.
271(h) 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.
296(a) further states:
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, shall not be immune, under the eleventh amendment of the Constitution of the United States or under any other doctrine of sovereign immunity, from suit in Federal court by any person... for infringement of a patent under section 271, or for any other violation under this title.
Thus, Congress set forth “unmistakably clear” language that infringing states would not be immune from suit under the Eleventh Amendment or any other doctrine of sovereign immunity. See Seminole Tribe of Florida v. Florida, 517 U.S. 44, 56 (1996) (Congress must make an “unmistakably clear” legislative statement of its intent to abrogate states’ sovereign immunity).
[8] Obviously, recent Eleventh Amendment cases have major Federalism implications and may reshape Federal-state, and especially, Congress-state relationships. An example is College Savings Bank v. Florida Prepaid Postsecondary Education Expense Board, 527 U.S. 666 (1999), a companion case to Florida Prepaid. Although College Savings involved the same parties as Florida Prepaid, in College Savings College Savings Bank sued Florida Prepaid for misrepresentation under Section 43(a) of the Lanham Act. There, the Supreme Court found that Congress could not make the state amenable to suit under section 5 of the Fourteenth Amendment to remedy or prevent constitutional violations. Further, the Court rejected the constructive waiver theory adopted in Parden v. Terminal Railway, 377 U.S. 184 (1964), and held that Florida had not waived its immunity through its market participation in interstate commerce. This article, however, will focus on Florida Prepaid’s seemingly untimely and foolish focus on “states’ rights,” and its practical effect on the economy, particularly at a time when the American economic market is becoming increasingly global in nature.
[9] Chisholm v. Georgia, 2 U.S. 419 (1793). In a scathing dissent, Justice Iredell asserted that the granted federal court jurisdiction was unconstitutional, and concluded his arguments with the following words of concern:
I pray to God, that if the Attorney General’s doctrine, as to the law, be established by the judgment of this Court, all the good he predicts from it may take place, and none of the evils with which, I have concern to say, it appears to me to be pregnant. Id. at 450.
[10] The Eleventh Amendment provides that “[t]he Judicial power of the United States shall not be construed to extend to any suit in law or equity, commenced or prosecuted against one of the United States by Citizens of another State, or by Citizens or Subjects of any Foreign State.” U.S. Const. amend. XI.
[11]Hans v. Louisiana, 134 U.S. 1 (1890).
[12] The Supreme Court has also applied the Eleventh Amendment to prohibit federal court actions by citizens of foreign countries whether in law, equity, or admiralty. Principality of Monaco v. State of Mississippi, 292 U.S. 313 (1934), Fla. Dept. of State v. Treasure Salvors Inc., 458 U.S. 670 (1982).
[13] Ex parte Young, 209 U.S. 123 (1908).
[14] Id. at 155-56. In such actions, the plaintiff may obtain prospective relief, even if future compliance with federal law costs the state money. However, Young prohibits awards of money damages for past conduct. Id., see also, Edelman v. Jordan, 415 U.S. 651 (1974)(holding that the Young doctrine is applicable for injunctive relief, but not prior monetary damages).
[15] Parden v. Terminal Railway, 377 U.S. 184, 195-96 (1964).
[16] Fitzpatrick v. Bitzer, 427 U.S. 445, 456 (1976).
[17] Id.
[18] 473 U.S. 234 (1985).
[19] Id.
[20] Pennsylvania v. Union Gas Company, 491 U.S. 1, 13-19 (1989).
[21] Seminole Tribe of Florida v. Florida, 517 U.S. 44 (1996).
[22] Id.; Fitzpatrick, 427 U.S. 445 (1976).
[23] Seminole, 517 U.S. at.59; Fitzpatrick, 427 U.S. at 456.
[24] Seminole, 517 U.S. 44, 55 (1996).
[25] City of Boerne, 521 U.S. at 519-520.
[26] Id.
[27] 527 U.S. 666, 673-75 (1999).
[28] 527 U.S. 706 (1999).
[29] 120 S.Ct. 631 (2000).
[30] 473 U.S. 234, 242 (1985).
[31] 893 F.2d 331 (Fed.Cir.1990).
[32] 919 F.2d 726 (Fed.Cir.1990).
[33] Chew, 893 F.2d 331 (Fed. Cir. 1990), Jacobs, 919 F.2d 726 (Fed. Cir. 1990).
[34] 35 U.S.C. 271(h), 35 U.S.C. 296. In 1990 and 1992, Congress also passed the Copyright Remedy Clarification Act and the Trademark Remedy Clarification Act to effect the same purpose. P.L. 101-555 (1990); P.L. 102-542 (1992).
[35] The amendments provide treble damages, attorney’s fees, costs, and injunctive relief against states sued under those federal patent laws. 35 U.S.C. 271(h), 296(a), 1992 Patent and Plant Variety Protection Remedy Clarification Act.
[36] 527 U.S. 627, 633 (1999).
[37] Florida Prepaid, 119 S.Ct. 2199, 2223 (1999).
[38] Id.
[39] Id. at 2203.
[40] Id.
[41] U.S. Patent No. 4,722,055 (issued Jan 26, 1988).
[42] Florida Prepaid at 630-31.
[43] U.S. Patent No. 4,722,055 (issued Jan 26, 1988).
[44] College Savings v. Florida Prepaid, 148 F.3d 1343, 1346 (Fed.Cir.App.1998).
[45] Seminole Tribe of Florida v. Florida, 517 U.S. 44 (1996)(Congress may not abrogate state sovereign immunity pursuant to its powers to regulate commerce under Article I of the Constitution), overruling Pennsylvania v. Union Gas Co., 491 U.S. 1 (1989).
[46] College Savings v. Florida Prepaid, 148 F.3d 1343, 1346 (Fed.Cir.1998).
[47] Florida Prepaid, 527 U.S. at 633.The United States defended the constitutionality of the Patent Remedy Act. College Savings, 148 F.3d at 1346.The Patent Clause provides that: The Congress shall have Power To... promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries... U.S. Const. art. I, 8, cl.8.
[48] Florida Prepaid, 527 U.S. at 633.
[49] College Savings, 148 F.3d at 1346.
[50] 527 U.S. 627, 634 (1999).
[51] 527 U.S. 627, 634 (1999).
[52] 527 U.S. 627. Justice Rehnquist was joined by Justices O’Connor, Scalia, Kennedy, and Thomas.
Justices Stevens, joined by Justices Souter, Ginsberg and Breyer dissented. They argued that the uniformity of patent laws was a matter of “overriding significance,” and that the states were heavily involved in the patent system. Further, an absence of effective state remedies for patent infringement was a sufficient basis to support abrogating legislation under section 5 of the Fourteenth Amendment. Florida Prepaid, 527 U.S. at 648-65, 656-57.
[53] 517 U.S. at 55.
[54] 527 U.S. 627, 635 (citing Seminole Tribe, 517 U.S. 44, 55 (1996)).
[55] 527 U.S. 627, 635 (citing 35 U.S.C. 296(a) (1994), which states, in pertinent part: “Any State... shall not be immune, under the eleventh amendment of the Constitution of the United States or under any other doctrine of sovereign immunity, from suit in federal court... for infringement of a patent.”).
[56] Id. at 637-39 (citing City of Boerne v. Flores, 521 U.S. 507, 512, 514, 519-520 (1997)).
[57] The Supreme Court pointed to testimony evidencing compliance with patent law by “many” states. Florida Prepaid, 527 U.S. at 640. Further, the Court interpreted Congressional testimony as establishing that state patent infringement was not a national problem, and Congress did not “respond to [the] history of ‘widespread and persisting deprivation of constitutional rights’” rendering Congress’ actions as merely working to “head off” a “speculative harm.” Id. at 641, (1999) (quoting City of Boerne, 521 U.S. 507, 526 (1997)).
The following is an excerpt from a dialogue before Congress between Representative Kastenmeier and Jeffrey M. Samuels, Acting Commissioner of Patents and Trademarks, United States Department of Commerce:
MR. KASTENMEIER:... Accordingly, could one argue that this legislation may be premature. We really do not know whether it will have any affect [sic] or not.
MR. SAMUELS: Well, you are right, Mr. Chairman. There have not been many cases that have raised this issue.... I guess as a general policy statement, we believe that those engaged those who do engage in patent infringement should be subject to all the remedies that are set forth in the Patent Act and that the rights of a patent owner should not be dependent upon the identity of the entity who is infringing, whether it be a private individual, or corporation, or State... So just as a general philosophical matter, we believe that this law needs to be passed.
Florida Prepaid, 527 U.S. at 641 (citing Patent Remedy Clarification Act: Hearing on H.R. 3886 before the Subcommittee on Courts, Intellectual Property, and the Administration of Justice of the House Committee on the Judiciary, 101st Cong., Sess. 2, 56 (1990) at p.22).
[58] Under the Due Process Clause of the Fourteenth Amendment, a state’s patent infringement violates a constitutionally-protected interest only when the state provides no remedy, or inadequate remedies, to the injured party. Florida Prepaid, 527 U.S. at 643.
[59] 527 U.S. at 643-44.
[60] Id., at 645.The Court quickly dispensed with College Savings Bank’s other argument, that Florida consented to litigation by its activities in the commercial realm. Id., at 635. First, the Court found no evidence that Florida had expressly consented to suit in federal court. Id. Second, the Court’s overruling in College Savings Bank v. Florida Prepaid, Postsecondary Ed. Expense Bd. of the Parden constructive waiver doctrine of state sovereign immunity precluded Florida’s activities under the Patent Act from creating an implied waiver of sovereign immunity. Id.; 527 U.S. 666, 680 (1999) overruling Parden v. Terminal Railway Company, 377 U.S. 184 (1964).
[61] Florida Prepaid, 527 U.S. at 645-46.
[62] In Alden v. Maine, the Court opined that
Congress must accord States the esteem due to them as joint participants in a federal system, one beginning with the premise of sovereignty in both the central Government and the separate States527 U.S. 706, 758 (1999), and that [the Constitution] reserves to [the states] a substantial portion of the Nation’s primary sovereignty, together with the dignity and essential attributes inhering in that status.
Id.
[63] In Idaho v. Coeur d’Alene Tribe, 521 U.S. 261 (1997), Justice Kennedy declared that “the dignity and status of its statehood allows Idaho to rely on its Eleventh Amendment immunity and to insist upon responding to these claims in its own courts, which are open to hear and determine the case.” Id. at 262. The Court espoused a similar view in Hess v. Port. Auth. Trans-Hudson Corp., 513 U.S. 30, (1994), stating that:
current Eleventh Amendment jurisprudence emphasizes the integrity retained by each State in our federal system... The Amendment is rooted in a recognition that the States, although a union, maintain certain attributes of sovereignty, including sovereign immunity.... It thus accords the States the respect owed them as members of the federation.
Id. at 39-41.
[64] Alden v. Maine, 119 S.Ct. 2240, 2264 (1999) (citing In re Ayers, 123 U.S. 443, 505 (1887)), Seminole Tribe v. Florida, 517 U.S. 44, 58 (1996).
[65] College Savings Bank v. Florida Prepaid, 527 U.S. 666, 675, 681-2 (1999) (quoting Clark v. Barnard, 108 U.S. 436, 447 (1883)).
[66] 527 U.S. 666 (1999).
[67] 527 U.S. 666, 685 (citing Welch, 483 U.S., at 477), cf. Atascadero, 473 U.S., at 246.
[68] Alden, 527 U.S. 706, 755 (quoting U.S. Const. art. VI).
[69] THE FEDERALIST NO. 15, at 78 (Alexander Hamilton)(Clinton Rossiter ed., 1961).
[70] 527 U.S. 627 (1999).
[71] See, e.g., SMARTMONEY.COM: Hey! We Thought of that First!, DOW JONES NEWS SERVICE, November 16, 1999 (article discussing the value of patents as the new currency of our economy).
[72] Kevin Rivette and David Kline, authors of “Rembrandts in the Attic,” recently examined the importance of patents in the current business realm. In their book, they state that
intellectual property [has been] transformed from a sleepy area of law and business to one of the driving engines of a high-technology economy. Indeed, the competitive battles once fought for control of markets and raw materials are now increasingly being waged over the exclusive rights to new ideas and inventions. Whereas executives once feared that competitors might outproduce or outmarket them, today they worry that rivals... may secure the patent rights to the essential technologies or even to the fundamental business concepts that they need in order to be in business in the first place.
RIVETTE AND KLINE, REMBRANDTS IN THE ATTIC, (Hvd. Business School Press 2000), at pp.2-3 (quoting Sabra Chartrand, Patents: A federal agency, in transition, reaches out to independent investors with a new department, The New York Times, 5 April 1999).
See also, SHAPIRO AND VARIAN, INFORMATION RULES: A STRATEGIC GUIDE TO THE NETWORK ECONOMY (Hvd. Bus. School Press 2000), NEEF, THE ECONOMIC IMPACT OF KNOWLEDGE (Buttenworth Heineman 1998), Cortada, RISE OF THE KNOWLEDGE WORKER (Buttenworth Heineman 1998), NEEF, THE KNOWLEDGE ECONOMY (Buttenworth Heineman 1998), KLEIN, THE STRATEGIC MANAGEMENT OF INTELLECTUAL CAPITAL (Buttenworth Heineman 1998), NEEF, A LITTLE KNOWLEDGE IS A DANGEROUS THING: UNDERSTANDING OUR GLOBAL KNOWLEDGE ECONOMY (Buttenworth Heineman 1999), Peter F. Drucker, Beyond the Information Revolution, ATLANTIC MONTHLY, October 1999, at p. 47 (Provides insightful examination of the evolution of economic value from the Industrial Revolution to the current “knowledge economy.”)
[73] The current litigation between the online booksellers Amazon.com and Barnesandnoble.com over Amazon.com’s patent exemplifies the role of patents in protecting “intangible” inventions born of the Internet era and the knowledge-based economy. In Amazon.com Inc. v. Barnesandnoble.com Inc., 73 F.Supp.2d 1228 (W.D.Wash.1999), Amazon.com brought an action in the Federal District Court for the Western District of Washington against Barnesandnoble.com. Id. at 1231.Amazon.com alleged that Barnesandnoble.com’s method for ordering books on the Internet infringed its own “411” patent. Amazon.com’s “411” patent protects its unique “one-click” ordering system allowing a consumer to place his order by a single click on the computer mouse rather than through the traditional multi-step process necessitating numerous “clicks” of the mouse. Id. at 1231, 1236-37.
Not only was the “411” patent unique, but it was tremendously successful. Id., at 1236-7. At the hearing on the preliminary injunction, Amazon.com testified that the “single action” ordering was extremely popular and used by “millions of customers.” The patent was also extolled by market experts who described the “one-click” feature as “legendary” and a “seductive innovation.” Id. One trade magazine noted the monetary significance of the invention as follows:
Net retailers are starting to realize that potential customers often don’t make it as far as the virtual checkout line- they fill their on-line shopping carts with products, then simply abandon them... Faced with these problems, it’s no surprise that retailers have been eyeing Amazon.com’s one-click purchases with envy for some time now.
Id. (citing InfoWorld (Exh. 11, Bezos Decl. Sec. 14)).
On December 1, 1999, Judge Pechman granted Amazon.com a preliminary injunction forbidding Barnesandnoble.com from using a one-click ordering method similar to that protected by Amazon.com’s “411” patent. Id. at 1249.
[74] Patently A Record- But Is It?, 1999 WL 9347691, ELECTRONICS TIMES, January 19, 1999. In State Street Bank & Trust Co. v. Signature Financial Group Inc., 149 F.3d 1368 (U.S.App.Ct.1998), the U.S. Court of Appeals decided that a “computerized accounting system” business method was patentable. In January 2000, the California-based software firm Geoworks more than doubled its stock price in one day when it announced that it held a patent for a core wireless application protocol (WAP) technology. Evan Ratliff, PATENT UPENDING, WIRED, June 2000 at 222. For an insightful examination of the effect of increased applications for “business methods” on patents generally, see Robert P. Merges, As Many as Six Impossible Patents Before Breakfast: Property Rights for Business Concepts and Patent System Reform, 14 Berkeley Tech. L.J. 577 (1999).
[75] RIVETTE AND KLINE, REMBRANDTS IN THE ATTIC, at p. 4.
[76] Id.
[77] Id.
[78] Id.
[79] Id.
[80] 1999 WL 160347, p. 3, Florida Prepaid Postsecondary Education Expense Board v. College Savings Bank, Amicus Brief of New York Intellectual Property Law Association in Support of Respondents.
[81] Id. at 3-4.
[82] Florida jointly owns patents with International Flavors and Fragrances, Inc., Abela Laser Systems, Inc., Cook, Inc., and NEC Research Institute, Inc. Florida also owns a patent entitled “Fuzzy System Expert Learning Network” with a Japanese company named Daido Tokushuko, K.K. Id. at 5.
[83] Fla.Stat. 240.229 (1997) states in pertinent part:
[E]ach university is authorized, in its own name, to:
(1) [P]erform all things necessary to secure letters of patent... and to enforce its rights therein...
(2) License, lease, assign, or otherwise give written consent to any person, firm, or corporation for the manufacture or use thereof, on a royalty basis or for such other consideration as the university shall deem proper.
(3) Take any action necessary, including legal action, to protect against improper or unlawful use or infringement.
(4) Enforce the collection of any sums due the university for the manufacture or use thereof by any other party.
[84] Presently, nineteen states maintain college prepayment plans similar to that of Florida. The following states maintain programs for prepaid tuition: Alabama, Ala. Code 16‑33C-6 (2000); Alaska, Al. Stats. 14.40.811 (1991); Colorado, Colo. Rev. Stat. 23-3.1 et seq.; Florida, Fla. Stat. 240.551(1), (3) (2000); Illinois, 110 Ill. Comp. Stat. 979.1 et seq. (1997); Maryland, Md. Code 18-1902 et seq. (1997); Massachusetts, Mass. Gen. Laws 15C; Michigan, Mich. Comp. Laws Ann. 390.1427 (2000); Mississippi, Miss. Code 37-355-1 et seq.; Nevada, Nev. Rev. Stat. Chap. 353 (B)(1997); Ohio, Oh. Rev. Code Ann. 3334 (2000); Pennsylvania, Pa. Cons. Stat. 6901.309(c)(1992); South Carolina, S.C. Code Ann. 59-4-10 (1999); Tennessee, Tenn. Code Ann. 49-7-801 (2000); Texas, Tex. Code Ann. 54.633 (1995); Virginia, Va. Code Ann. 23-38.75 et seq.; Washington, Wash. Rev. Code 28B.95.010 et seq.; West Virginia, W. Va. Code 1830 et seq.; Wyoming, Wyo. Stat. 21-16-502 (1991).
States’ use of
copyrighted materials is just as copious as their use of patented technology. On this issue, Barbara Ringer, former
Register of Copyrights, testified before Congress as follows:
States and their
instrumentalities are major users of copyrighted material of all sorts- not
only the familiar forms of printed books and periodicals but the whole range of
creative expression...: dance and drama, music and sound records; photographs
and filmstrips; motion pictures and video recordings; computer software and
chips; pictorial and graphic material, maps and architectural plans... State exploitation of copyrighted works
is by no means limited to uses that can be called educational or nonprofit. They include large publishing
enterprises, computer networks, off-air taping, public performance and display,
radio and television broadcasting, and cable transmissions, to name only the
most obvious.
Florida Prepaid Postsecondary Education Expense Board v. College Savings Bank, 1999 WL 161064, at p. 2, Amicus Brief of The American Society of Composers, Authors, and Publishers, et al. (citing Copyright Remedy Clarification Act: Hearings on H.R. 1131 Before the Subcomm. On Courts, Intellectual Property and the Admin. of Justice of the House Comm. on the Judiciary, 101st Cong. 93 (1989)).
Examples of states as plaintiffs in patent litigation abound. See, e.g., Regents of the Univ. of Minnesota v. Glaxo Wellcome, Inc., 44 F. Supp.2d 998 (D. Minn. 1999)(State university sought to enforce licensing agreement of a patented compound when licensee attempted to manufacture compound in less profitable manner); Univ. of Colorado Foundation, Inc. v. American Cyanamid Co., 974 F. Supp. 1339 (D.Colo. 1997)(State university and professors brought copyright and patent infringement, fraud, and unjust enrichment claims against license holder); Gen-Probe, Inc. v. Amoco Corp., Inc., 926 F. Supp. 948 (S.D. Cal. 1996)(University sued beneficiary of government grant for declaration of co-inventorship and conversion of patent); Ciba-geigy Corp. v. Alza Corp., 804 F. Supp. 614 (D.N.J. 1992)(Licensee of state university’s patent filed action against infringer of patent).
[85] Graham v. John Deere Co., 383 U.S. 1, 9 (1966) (Uniform interpretation of patent statutes promoting invention and rewarding novel and useful advances in technology is a “strong federal interest”). See also, Florida Prepaid at 2212 (J. Stevens, dissenting) (stating that “[c]onsistency, uniformity, and familiarity with the extensive and relevant body of patent jurisprudence are matters of overriding significance in this area of the law. and that [p]atent infringement litigation often raises difficult technical issues that are unfamiliar to the average trial judge.”).
[86] See note 46, Patent Clause, U.S. Const., Art. I, 8, cl.8.
[87] 28 U.S.C. 1338(a) states: “The district courts shall have original jurisdiction of any civil action arising under any Act of Congress relating to patents, plant variety protection, copyrights and trade-mark. Such jurisdiction shall be exclusive of the courts of the states in patent, plant variety protection and copyright cases.” 28 U.S.C. 1338(a)(1993. Annot.)
[88] 28 U.S.C. 1295 states, in pertinent part: “The United States Court of Appeals for the Federal Circuit shall have exclusive jurisdiction... (a)(1) of an appeal from a decision of a district court of the United States... if the jurisdiction of that court was based... on Section 1338 of this title...” 28 U.S.C. 1295 (1993.Annot.)
The Court of Appeals for the Federal Circuit does not, however, have authority to hear appeals in patent cases filed in state court. Florida Prepaid Postsecondary Educational Expense Board v. College Savings Bank, 527 U.S. 627, 649 (1999) (Stevens, J., dissenting).
[89] The West Virginia State Constitution provides: “The State of West Virginia shall never be made defendant in any court of law or equity...” W. Va. Const. art. VI, 35.
[90] Colo. Rev. Stat. Ann. 24-10-106, Immunity and Partial Waiver, states in pertinent part:
(1) A public entity shall be immune from liability in all claims for injury which lie in tort or could lie in tort regardless of whether that may be the type or the form of relief chosen by the claimant except as provided otherwise in this section. Sovereign immunity is waived by a public entity in an action for injuries resulting from:
(a) The operation of a motor vehicle, owned or leased by such public entity, by a public employee while in the course of employment, except emergency vehicles...
(b) The operation of any public hospital, correctional facility... or jail by such public entity;
(c) A dangerous condition of any public building;
(d) (I-III) A dangerous condition of a public highway, road, or street... or of a realign(ed) stop sign or yield sign... or of accumulat[ed] snow and ice which physically interferes with public access...
Maine Rev. Stat. tit. 14, 8103, Immunity from Suit, states in pertinent part:
1. Immunity. Except as otherwise expressly provided by statute, all governmental entities shall be immune from suit on any and all tort claims seeking recovery of damages.
Maine Rev. Stat. tit. 14, 8104-A, Exceptions to Immunity states in pertinent part:
A governmental entity is liable for its negligent acts or omissions in 1) its ownership, maintenance or use of any.... motor vehicle... special mobile equipment... trailers... aircraft... watercraft... snowmobiles... other machinery or equipment, whether mobile or stationary; 2) the construction, operation or maintenance of any public building... 3) the discharge of... pollutants into or upon land... 4)... construction, street cleaning or repair... on any (road)...
[91] Alden v. Maine, 527 U.S. 706, 712, (holding that sovereign immunity principles underlying the Eleventh Amendment also serve as a bar to state court actions against states).
[92] Article III of the Constitution gives Congress the authority to determine the breadth of federal jurisdiction. Further, 28 U.S.C. 1332 authorizes diversity jurisdiction of federal courts over citizens of different states. In providing a neutral federal forum for diverse parties, diversity jurisdiction prevents the potential for judicial prejudice against an out-of-state defendant by a state court. Similarly, 28 U.S.C. 1441 allows for a defendant to remove to federal court an action filed in state court “of which the district courts have original jurisdiction.” See also, Chemerinsky, Federal Jurisdiction 286-92 (3d ed. 1999) for an insightful discussion on the merits of a neutral federal forum.
[93] 527 U.S. 627 (1999).
[94] 527 U.S. 666 (1999).
[95] 527 U.S. 706 (1999).
[96] 527 U.S. 627, at 663.
[97] College Savings Bank, 527 U.S. 666, 692, J. Stevens, dissenting.
[98] Alden
at 2289 (Souter, J. dissenting) (citing United States v. Lee, 106 U.S.
196, 208 (1882)). See also
John Paul Stevens, Is Justice Irrelevant?, 87 Nw. U. L. Rev. 1121 (1993).
[99] In 1997, the Court acknowledged the Internet’s ability to provide “a vast platform from which to address and hear from a world-wide audience of millions of readers, viewers, researchers and buyers.” Reno v. American Civil Liberties Union, 521 U.S. 844, 886 (1997).
[100] University of Alabama at Birmingham Bd. of Trustees v. Garrett, 989 F. Supp. 1409 (N.D.Ala.1999).
[101] 120 S.Ct. 1669 (2000).
[102] See Amazon.com Inc. v. Barnesandnoble.com Inc., 73 F.Supp.2d 1228 (W.D.Wash.1999).