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Volume 4 | Number 1

Volume 4 | Number 1 (Winter 2004)

You may download and read the Full Edition, or click on a citation below for the individual articles.

DOES BROOKFIELD REALLY TELL US WHAT WE CANNOT DO WITH METATAGS IN THE INTERNET AGE?
Jitendra Malik and Susan M. Young
4 Wake Forest Intell. Prop. L. J. 1

This paper looks at the use of trademarks as metatags in Internet websites. The Brookfield opinion is the key opinion addressing the issue of using a competitor’s trademarks as a website’s metatags. The Brookfield opinion can be interpreted to cover three possible Internet situations addressing the use of trademarks as metatags. The first two interpretations involve deceptive use of metatags on the part of website operators to lure consumers to their websites. In these two situations, Brookfield’s analysis using the initial interest confusion doctrine to stop this practice is entirely correct. However, the use of trademarks as metatags where a search engine uses the metatags to compile a list of comparable websites may not be within the scope of Brookfield because of Brookfield’s conflicting illustrations of what it considered as abusive use. Based on this analysis, the authors suggest that Brookfield should not be applied in this situation; which is also the situation most commonly encountered when using the Internet. Rather, the authors believe that use of trademarks as metatags in this situation should be allowed to promote competition and choice among websites that offer similar products.

ONE SIZE FITS MOST: THE RISE OF A LOOPHOLE IN EXTRATERRITORIAL PATENT LEGISLATION AND A PROPOSAL FOR CHANGE
Kirk T. Bradley
4 Wake Forest Intell. Prop. L. J. 25

In 1984, Congress amended the Patent Act by adding Section 271(f), which prevents one from circumventing the patent laws by exporting the components of a patented invention to be assembled abroad into an infringing product. The new legislation closed a loophole in the patent laws recognized by the U.S. Supreme Court more than a decade earlier in Deepsouth Packing Co. v. Laitram Corp. With the new legislation came change. Slowly at first, and more frequently in recent years, patentees began alleging direct patent infringement premised on extraterritorial conduct. For nearly eighteen years, Section 271(f) served effectively its purpose of “prevent[ing] copiers from avoiding U.S.patents by supplying components of a patented product in this country so that the assembly of the components may be completed abroad.” In 2001 and again in 2002, however, a new loophole arose. In Bristol-Myers Squibb Co. v. Rhone-Poulenc Rorer, Inc. and Fieldturf, Inc. v. Southwest Recreational Industries, the respective district courts held that exporting a single component of a patented invention did not implicate Section 271(f)(1), which, by its express terms, requires the shipment of “components” in the plural.

This paper analyzes Congress’s intent in enacting Section 271(f) and considers whether the statutory language unnecessarily constrained the Bristol-Myers and Fieldturf courts in their interpretation of the legislation. The paper concludes that the language is indeed unduly restrictive, and a proposal for change is suggested.

HOW BUSINESS METHOD PATENTS HAVE DEVELOPED SINCE STATE STREET BANK & TRUST CO. V. SIGNATURE FINANCIAL GROUP, INC.
James W. Tolin III
4 Wake Forest Intell. Prop. L. J. 50

In State Street Bank & Trust Co. v. Signature Financial Group, Inc., the Federal Circuit completely abolished the business method exception to patentability. This abolishment and an increase in the number business method patents has caused great harm to some businesses. Cases that have been decided since State Street reveal that the development of this area of patents could make businesses more susceptible to litigation involving their business practices, to the loss of trade secrets that are patented, and to monopolies caused by the exclusion of a patent. Courts addressing business method patents should carefully interpret the patent statutes and the claims of business method patents so that injustice does not occur.