08-4164 Board of Regents v. Phoenix International Software, Inc.

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Constitutional Law
Sovereign immunity

A state does not lose its sovereign immunity through litigation conduct.

“Phoenix contends that Wisconsin’s litigation status was similarly changed-and its sovereign immunity similarly waived-when it made the decision to file an action in district court pursuant to 15 U.S.C. § 1071(b) rather than appealing the TTAB’s decision to the Federal Circuit pursuant to § 1071(a). In choosing to proceed under § 1071(b) rather than § 1071(a), Phoenix asserts, Wisconsin gained the benefit of additional evidence and so should face the cost of Phoenix’s infringement and false designation of origin counterclaims. But the simple cost-benefit analysis Phoenix proposes overlooks the true nature of the proceedings here. Wisconsin, like Georgia in Lapides, was originally haled into litigation with Phoenix involuntarily. Its status was that of a defendant. See 37 C.F.R. § 2.116(b). Wisconsin’s election to pursue an appeal in the district court rather than the appellate court-which it, like private parties to cancellation proceedings, was statutorily entitled to do-gave it the official title of plaintiff, but title is not what matters for sovereign immunity purposes. If the character of the litigation act turned on title, Georgia would have been able to assert its sovereign immunity claims in Lapides.”

Reversed.

08-4164 Board of Regents v. Phoenix International Software, Inc.

Appeal from the United States District Court for the Western District of Wisconsin, Crabb, J., Tinder, J.

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