Judicial Wisdom or Patent Envy? The Eleventh, Seventh and Federal Circuits' Patent Jurisdictional Battle

This article observes a startling new appellate jurisdictional battle waged by regional circuit courts to chip away the Federal Circuit’s exclusive jurisdiction in patent cases. The Eleventh Circuit took an unprecedented step by engaging in patent claim construction and infringement under literal infringement analysis and the doctrine of equivalents analysis. In a case of first impression, the Eleventh Circuit asserted that it legitimately has appellate jurisdiction to decide cases involving substantive patent law. Instead of grabbing jurisdiction, the Seventh Circuit, through its Chief Judge, grabbed public attention by advocating for the abolishment of the Federal Circuit’s exclusive jurisdiction over patent cases. The Chief Judge announced that the Seventh Circuit is able and ready to hear patent cases. Why do regional circuit courts now want to assert jurisdiction over patent cases? What implications can be drawn from the jurisdictional battle? Are their assertions of jurisdiction over patent cases legitimate? This article addresses these urgent questions

In the Name of Patent Stewardship: The Federal Circuit\u27s Overreach into Commercial Law

While the U.S. Court of Appeals for the Federal Circuit has admirably commandeered its stewardship of patent law—Congress bestowed the Federal Circuit with exclusive jurisdiction over patent appeals since 1982—the court has unabashedly extended its reach, unwelcomed, into commercial law. Camouflaged in the name of patent stewardship, the Federal Circuit’s foray into commercial law has yielded unexpected and unjustifiable results. This Article argues that, paradoxically, to maintain its stewardship of patent law, the Federal Circuit should not invoke patent law to rationalize its decisions concerning commercial law, which have dramatically altered established commercial law. This encroachment into commercial law, which is within the provenance of state law, destabilizes federalism causing uncertainty in state law. The Federal Circuit must refrain from encroaching into commercial law as it has no authority to inject itself into state law making

Banking the Unbanked Innovators

Innovators are necessary for the engine of economic growth. Why do banks still find innovators, from startups to high growth companies, unattractive as potential customers for banking and lending products? Banks typically make business loans to established companies with positive cash flow and physical assets. Banks are eager to make loans in real estate transactions. Throughout modern time, banks persistently avoid banking innovators. Nationwide, only five outlier banks are defying conventional banking practices, and the leader among them is Silicon Valley Bank. Against all the odds, Silicon Valley Bank began as a local, community bank for innovators in 1982, and has continued its success in banking innovators and became the 37th largest bank in the nation. Using Silicon Valley Bank as a case study, this Article provides a muchneeded model of banking innovators. Embracing innovators\u27 intellectual property assets, cultivating networks of experts to assist innovators, and behaving like entrepreneurs, not bankers, are key factors to the model of banking innovators. The model traverses secured transactions, intellectual property, contracts, and banking laws and regulations to create an ecosystem incubating and advancing innovators

Shifting the Paradigm in E-commerce: Move Over Inherently Distinctive Trademarks, The E-brand, I-brand and Generic Domain Names Ascending to Power?

“What\u27s in a name!” laments Juliet at her Shakespearean balcony. Four hundred years later, in the world of e-commerce, Juliet\u27s question would be “What\u27s in a domain name?” After spending all of the Montague\u27s wealth, Romeo might be able to respond, “Call me but love.com.” The price tag for some generic domain names cost a small fortune: Sex.com for $250 million, Business.com for$7.5 million, Broadband.com for $6 million, Loans.com for$3 million, Flu.com for $1.4 million, and Bingo.com for$1.1 million. In 1995, Procter and Gamble registered hundreds of generic domain names and offered them for sale at auction web sites five years later. The high price tags on generic domain names in the world of electronic commerce (“e-commerce”) represents a challenge to established trademark law. Internet companies spend large sums of money to acquire generic domain names and then expect certain legal protections for their investment. They look to trademark and unfair competition law to protect their domain names. Large monetary investment and high speculation in generic domain names bring into question whether trademark and unfair competition law can protect generic domain names. This conflict gives rise to several issues. First, whether trademark and unfair competition law under the Lanham Act should be extended to protect generic domain names that are highly valued in e-commerce. Second, whether extending the established trademark law to generic domain names will destroy the basic fabrics of trademark jurisprudence. Third, whether the extension hinders the growth of e-commerce to grant trademark exclusivity to generic domain name. Finally, whether it contradicts the existing domain name system that provides registrations on a first come first serve basis where registration of almost identical domain names, such as computer.com and computers.com, are allowed to co-exist peacefully. Part I of the Article will focus on the trademark paradigm before the arrival of e-commerce. The historical roots of trademarks and development of modern trademark law will be discussed to provide an understanding of trademarks and their functions in commerce. Part II will address how e-commerce fosters the creation of online branding with generic domain names. The demand for generic domain names in e-commerce is at a feverish stage and online companies are willing to pay high price tags for domain names solely for the purpose of getting Net surfers, i.e., potential customers, to their sites. Part III will examine the functions of domain names and whether such functions could be qualified as a trademark function. Finally, Part III will also examine whether a domain name that is capable of functioning as a trademark, but is not a valid trademark, can be protected under unfair competition law

Bankrupting Trademarks

The explosive growth of technology in the last two decades has vastly expanded intellectual property jurisprudence and elevated intellectual property to a heightened status in the marketplace. Indeed, a company\u27s intellectual property assets may now be its most valuable corporate assets. Moreover, the property value of some trademarks is significantly greater than that of the trademark owner\u27s physical assets. The term “intellectual property” is commonly understood to include patents, trade secrets, copyrights, and trademarks. Yet a paradigm has been constructed and enforced over the last fifteen years wherein only patents, trade secrets, and copyrights are included. The paradigm specifically excludes trademarks from some of the protections afforded to the other three types of intellectual property. Under the paradigm, the licensees of patents, trade secrets, and copyrights are allowed to retain the right to use the licenses after the licensor has petitioned for bankruptcy and decided to sever the license agreements. On the other hand, a bankrupt licensor\u27s severing of a trademark license agreement extinguishes the licensee\u27s license rights. This Intellectual Property Bankruptcy Paradigm (“the Paradigm”) is embodied in the Intellectual Property Licenses in Bankruptcy Act. The Paradigm calls into question the normative values given to patents, trade secrets, and copyrights, on one end of the spectrum, and trademarks, on the other end. The fast changing role of trademarks in Internet global communication and commerce calls into question the exclusion of trademarks from the Paradigm. Further, the modern and less restrictive quality control practices and the integration of trademarks into the bundle of licensed rights in the marketplace undermine the foundation of the Paradigm. This Article contends that the Paradigm\u27s exclusion of trademarks is the result of a legislative reaction that occurred without a proper inquiry into trademark\u27s status as intellectual property, and that the exclusion threatens to bankrupt the goodwill of trademarks. This Article argues that trademark\u27s rapidly evolving role in the Internet economy and in integrated intellectual property licensing calls for an end to the exclusion of trademarks from the Paradigm. Part I examines the phenomenal rise of trademarks through licensing and the global Internet medium. This Part analyzes how the liberalization of the quality control requirement in licensing arrangements has fostered the expanded role of trademarks in the marketplace. Part II identifies the Intellectual Property Bankruptcy Paradigm in which patents, copyrights, and trade secrets--but not trademarks--are protected. This Part discusses the enactment of the Intellectual Property Licenses in Bankruptcy Act (“IPLBA”), and argues that Congress passed the Act in reaction to a court decision. Congress claimed that the creation of the IPLBA was necessary to maintain U.S. leadership in technology development. This rationale, however, does not justify the exclusion of trademarks from the Paradigm that protects only patent, copyright, and trade secret licenses. This Part explores the rationale and its limitations by examining, comparing, and contrasting patents, copyrights, trade secrets, and trademarks. Part III analyzes how notable cases have perpetuated the Paradigm. This Part identifies the consequences of the Paradigm on trademark licenses by examining two cases in which courts have applied the law and extinguished licensees\u27 rights to use licensed trademarks. Canons of statutory construction force courts to perpetuate the Paradigm, and do not permit courts to consider the high cost borne only by licensees of trademarks. Part IV questions whether the Paradigm\u27s exclusion of trademarks is rational in light of both the increased importance of Internet domain names as trademarks and the integration of trademark licenses as parts of the bundle of licensed rights. This Part focuses on the threat of bankrupting the goodwill of trademarks and its potential threat to the nascent e-commerce economy. This Part examines the consequences that ensue when the licenses of trademarked domain names and the licenses of trademarks in integrated licensing schemes are terminated and subsequently used by the bankrupt licensor or its authorized third party in association with different web pages, mix-matched, or materially different goods. Part V recommends the end of the exclusion of trademarks from the Paradigm. In light of the changing role of trademarks and the integration of trademarks in intellectual property licensing schemes, an amendment to the existing law is appropriate. When Congress enacted the IPLBA, quality control was the rationale for the exclusion of trademarks from the protection provided under the IPLBA. Such concern, however, does not justify the exclusion of trademarks. This Part also proposes and evaluates ways in which the exclusion of trademarks should cease. The Article concludes that the changing role of trademarks, the integration of trademarks into intellectual property licensing, and the apparent lack of benefits to the bankruptcy estate, unsecured creditors, and consumers, necessitate a shift in the Intellectual Property Bankruptcy Paradigm

The New Wild West: Measuring and Proving Fame and Dilution Under the Federal Trademark Dilution Act

The passage of the Federal Trademark Dilution Act of 1995 (the Dilution Act or Act) has been widely celebrated, as evidenced by the number of related articles, speeches and symposia. Commentators who applauded the adoption of the Dilution Act believed that a dilution claim would now be easier to prove by trademark owners against diluters because trademark owners would not have to establish the troublesome factual issue of consumer confusion. The courts have embraced the Act, and it has already proven to be an effective weapon for trademark owners. One court has even suggested trademark owners asserting claims of dilution bear a lighter burden than that required under section 43(a) of the Lanham Act because they do not have to demonstrate competition between the owners and the diluters or a likelihood of confusion as to the source of the products or services. As three years have gone by since the Act first went into effect, it has become clear that proving dilution under the Act is not as easy as many had previously thought. Indeed, the Fourth Circuit, in Ringling Bros.--Barnum & Bailey Combined Shows, Inc. v. Utah Division of Travel Development, has recently begun an open season in the Wild West of dilution land by requiring proof of actual economic harm to the famous mark\u27s selling power. The problems encountered by trademark owners attempting to pursue a dilution claim are inherent in the Act itself. The Act provides no concrete guidance on how fame and dilution should be measured or proven. This limitation has led judicial interpretation of the Act to a new Wild West where courts confront the task of measuring fame and dilution without the benefit of any criteria for making such measurements. In analyzing the Act, no court has provided a cut-off percentage for finding fame and/or dilution under either the likelihood of dilution or actual dilution standard. As a result, a wasteland of case law has developed with cases that either superficially or erroneously analyze dilution claims or avoid the dilution issue altogether by finding trademark infringement under the traditional theory of likelihood of confusion. Consequently, trademark owners who wish to assert dilution claims are faced with the harsh reality that, despite all the fanfare about the passage of the Act, getting protection under the Act is difficult, given the current inconsistent and incoherent jurisprudence addressing the measurement and proof of fame and dilution. This Article will attempt to conquer that new Wild West. Section I provides an overview of the Act, explains two traditional theories of dilution--tarnishment and blurring--and discusses the new diminishment theory of dilution recognized by courts in cases involving domain names on the Internet. Section II explores the limitations of the Act. Section III examines four authoritative cases that have addressed quantitative measurements of fame and/or dilution, and discusses the shortcomings in each case with regard to quantitative measurements. Section IV suggests a new approach to measuring and proving fame and dilution. This Article concludes with the assertion that this proposed approach would arm trademark owners with certainty in navigating the new Wild West of dilution claims analysis under the Dilution Act

Collateralizing Internet Privacy

Collateralizing privacy is a pervasive conduct committed by many on-line companies. Yet most don\u27t even realize that they are engaging in collateralizing privacy. Worse yet, governmental agencies and consumer groups are not even aware of the violation of on-line consumer privacy by the collateralization of privacy. Professor Nguyen argues that collateralizing privacy occurs under the existing privacy regime and the architecture of article 9 of the Uniform Commercial Code. Professor Nguyen critiques the violation of privacy through collateralization dilemmas and proposes a solution involving modifications of the contents of the financing statement and security agreement in secured transactions where consumer information is used as collateral and classified as a general intangible

In the Name of Patent Stewardship: The Federal Circuit’s Overreach in Commercial Law

While the U.S. Court of Appeals for the Federal Circuit has admirably commandeered its stewardship of patent law-Congress bestowed the Federal Circuit with exclusive jurisdiction over patent appeals since 1982-the court has unabashedly extended its reach, unwelcomed, into commercial law. Camouflaged in the name of patent stewardship, the Federal Circuit\u27s foray into commercial law has yielded unexpected and unjustifiable results. This Article argues that, paradoxically, to maintain its stewardship of patent law, the Federal Circuit should not invoke patent law to rationalize its decisions concerning commercial law, which have dramatically altered established commercial law. This encroachment into commercial law, which is within the provenance of state law, destabilizes federalism causing uncertainty in state law. The Federal Circuit must refrain from encroaching into commercial law as it has no authority to inject itself into state law making