13 January 2006

Georgia on My Mind?

Earlier this week, the Supreme Court determined in US v. Georgia that the Americans With Disabilities Act was a valid exercise of Congress's power under the Fourteenth Amendment, and that therefore Georgia could be sued for damages in federal court for alleged violations of the ADA. US v. Georgia, however, leads to an interesting question: What about intellectual property? That is, can a state be sued for copyright infringement? In short, was the Fifth Circuit's sweeping opinion in Arte Publico correct? It's not as easy a question as it looks, as Professor Patry has already noted (after we had exchanged some e-mail on the subject). The cause of this problem—as is all too common—is some bad writing.

This entire controversy descends from two sets of cases that were misinterpreted by the Fifth Circuit. The first is the notorious Seminole Tribes case, 517 U.S. 44 (1996). Seminole Tribes holds that legislation passed under the authority of the Commerce Clause1 could not validly and unilaterally abrogate a state's immunity from suit in federal court under the Eleventh Amendment. The Court noted that legislation passed under the authority of the Fourteenth Amendment, though, could; and that is precisely what it found concerning the ADA earlier this week. The problem comes with intellectual property issues; more precisely, the problem comes from matters arising from legislation and treaty obligations stemming from the IP Clause itself. This leads us to the notorious College Savings Bank decisions on the way to Arte Publico.

The second of the two College Savings Bank decisions2—both of which were decided on the same date—is by far the easier of the two to dispose of. CSB (B) concerns state liability for violation of § the Lanham Act, 15 U.S.C. § 1125(a)—essentially, infringement of a trademark (although it's a little bit more complicated than that, the complications aren't relevant). The key point is that the Lanham Act is not within the scope of the Intellectual Property Clause; it is, instead, a Commerce Clause statute. Trademark is neither an "invention" nor a "writing" as we understand those terms from the Intellectual Property Clause; CSB (B) is, therefore, squarely within the center of the Seminole Tribes doctrine. That is, whether or not one agrees with the rationale of Seminole Tribes—I, for one, have problems with it—at least it clearly applies.

The problem, though, is with CSB (A)3, which asserted a claim under the Patent and Plant Variety Protection Remedy Clarification Act. The difficulty here is twofold. First, the PPVPRCA has mixed sources of Congressional authority; although parts of it (and the parts most relevant to CSB (A)) flow from the Intellectual Property Clause, other parts flow from the Commerce Clause and from Congress's plenary authority over federal jurisdiction under Article III, § 2.4 Second, and more troubling, is the rhetorical unsoundness of the 5–4 decision itself.5 The critical language occurs very early in CSB (A):

In Seminole Tribe, of course, this Court overruled the plurality opinion in Pennsylvania v. Union Gas Co., our only prior case finding congressional authority to abrogate state sovereign immunity pursuant to an Article I power (the Commerce Clause). Seminole Tribe makes clear that Congress may not abrogate state sovereign immunity pursuant to its Article I powers; hence the Patent Remedy Act cannot be sustained under either the Commerce Clause or the Patent Clause.

CSB (A), 527 U.S. at 636 (citations omitted). Pardon me, Mr. Chief Justice, but the second sentence does not follow from the first one. Not only was Seminole Tribes explicitly limited to matters under the Commerce Clause, but there is no language anywhere in that opinion that justifies the conclusion that it applies to all of Article I, and the remainder of the authority you cite in support of this proposition also considers only Commerce Clause legislation.6

Translating to the copyright context makes things even murkier. In Chavez v. Arte Publico Press, 204 F.3d 601 (5th Cir. 2000) and Rodriguez v. Texas Comm'n on the Arts, 199 F.3d 279 (5th Cir. 1999), the Fifth Circuit applied CSB (A) to the Copyright Act and found that the state of Texas was immune from suit for violating copyrights. This is a much harder question than the Fifth Circuit's sweeping opinions made it seem. For one thing, the copyrights at issue—however inequitable the behavior of the respective copyright holders may appear—are in the core of the Intellectual Property Clause. For another thing, there is a reinforcing treaty consideration that may, under a pretty unchallenged line of precedent, give Congress the power to bind states in a way that Article I does not give it direct authority. May.

My point is not that Arte Publico is clearly wrong (although I think it is). My point is that US v. Georgia points out that legislation enacted under Article I, but not the general-purpose Commerce Clause (or, I suppose, the Necessary and Proper Clause)—and supported by treaty obligations—is an intermediate, and not yet properly considered, case between the strictness of Seminole Tribes and the permissiveness of US v. Georgia. This intermediate case is precisely where the Ex parte Young doctrine dismissed so rapidly in Seminole Tribes has the greatest potential scope. But that is for a very long, involved law review article. I'm rapidly coming up with more article topics than I have time to complete…

  1. Technically, it was the Indian Commerce Clause, but the Court held that there is no distinction between the Commerce Clause and the Indian Commerce Clause for this purpose.
  2. 527 U.S. 666 (1999).
  3. 527 U.S. 627 (1999).
  4. Equally troubling, but definitely worthy of ten thousand words and a couple of hundred footnotes, is the exact nature of the patent actually at issue: A "business method" patent of extremely dubious novelty. The ironic effect of CSB (A) was to essentially insulate this particular patent from judicial review in an area that the Patent Office simply did not have the expertise to properly examine—either at time of issuance or during a later interference or reexamination proceeding.
  5. Interestingly, two of the majority in CSB (A) were Chief Justice Rehnquist and Justice O'Connor, one of whom has already been replaced and the other of whom will (almost certainly) be replaced before the end of this term, in an opinion written by Chief Justice Rehnquist.
  6. What makes this argument more persuasive to me is that the majority opinion is completely silent on another matter: the implicit conflict between CSB (A) and Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141 (1989)—ironically enough, another case from Florida.