Blueprint of a gear train.

 Robert J. Yarbrough
Patent Attorney

 Patents - Inventions - Trademarks 

Newsletter Issue 13 - March 2010

In this Issue:

Is an image without a copyright notice free to use?.
Don't go naked when assigning a trademark.
PTO budget proposes more examiners and fees..
Cease and desist letters and trademark rights.

Ask Dr. Copyright:  Can you freely copy images that have no copyright notice?

by Lawrence Husick

Ask Dr. Copyright...

Dear Dr. C:image of Dr. copyright

I used Google's image search and found a really great photo that I saved. It does not have a notice on it. Now I want to use it on my web site. I may also have done the same thing a "few" times before. Is that OK?

-- Anonymous (for obvious reasons)

Dear Anonymous:

You may already be a winner! Except you may have won the copyright infringer of the year award -- not something you really wanted.

Under United States law and international treaties, copyright automatically attaches the moment a work is created. In the case of a photo, as soon as the camera clicks, the photographer has rights that will last for her life, plus another 70 years (or 95 years if she was working for a corporation in taking the photo.) No formal registration or notice is required (as was the case before the law was changed in the mid-1990s.) Copyright means that the owner has the right to control, among other things, the making and distribution of copies, as well as the public display of the work.

Merely because a photo is publicly available does not mean that it is in the "public domain" where you are free to do anything you like with it. So, how can you use this great photo on your web page, but not run afoul of the long arm of the law by making an illegal copy?

Rather than use a photo for which you have no rights, you can search for images that are in the public domain (because the owner has said so) or licensed for public use under the Creative Commons or GPL licenses. You can also obtain images for a fee from a stock photo house or clip art company. Even easier, you can link to the original photo from your web site. That way, you're not making a copy of the photo at all, you're just instructing people reading your web page to see the photo from the original source. However, it's always a good idea to obtain permission from the owner of the image before linking. Just be sure that you are linking to the original image and not to another infringing copy.

If you have specific questions, ask an attorney at LW&H. They'll help you sort it all out.

Don't go naked when assigning a trademark.

by Adam Garsonimage of naked mole rat

So you want to sell your trademark to another business. You can do that because trademarks are considered property and may be bought and sold. But trademarks are also special kinds of property and one must use care when crafting the sale so that it is effective and enforceable by both parties to the transaction.

The outright sale of a trademark is referred to as a "trademark assignment," that is, the sale of all one's rights in a trademark. An assignment is distinguished from a "license," which is the granting to another of a limited right to use the trademark in exchange for a royalty. When you assign a trademark to a third party, you are left with no rights in the trademark.

To insure that your sale or assignment of a trademark is proper, you must understand that trademarks are merely symbols of good will. "Good will" is the reputation and advantage that your business has acquired over time. One commentator has described the relationship between a trademark symbol and good will as "inseparable as Siamese Twins who cannot be separated without death to both." Without a business or without good will, a trademark is worthless. That brings us to the first requirement: the trademark you wish to assign must be in use. If you're not using the trademark then there is no associated goodwill and the trademark is worthless.

The second requirement is that assignment of a trademark must be accompanied by the goodwill associated with the trademark. Typically, a trademark assignment will recite that the trademark and the goodwill are being transferred to the buyer. This is more than a technical requirement. If the buyer of the trademark uses it in connection with different goods or services than the seller of a trademark, it may deceive the public into believing that the trademark is associated with something that it is not. A trademark assignment that is made without its associated goodwill is said to be an "assignment in gross" or a "naked assignment." Such assignments, are forbidden by law and will be deemed invalid if challenged in court.

If you are interested in assigning a trademark or wish to buy trademark, it makes good sense to find a lawyer who can help you avoid the pitfalls. Let us know if we can help.

PTO budget proposal includes more examiners, higher fees.

by Robert J. Yarbroughimage of the U.S. PTO logo

The PTO needs more examiners and better information technology infrastructure to bring down pendency of applications and improve the quality of issued patents, but does not have the money to pay for them. For years, Congress has taken the fees paid by applicants for patents and trademarks and used those funds for other purposes, leaving the PTO under-funded. This behavior offends us and offends many inventors and trademark owners.

The Obama Administration recently published its budget proposal for FY 2011. The proposed budget for the PTO is $2.322 billion, which is made up of an expected $2.098 billion in fee collections and another $224 million in increased patent fees. Although not expressly stated, simple addition shows that the entire amount of projected fees would go for PTO operations. The PTO projects that this budget will allow the agency to hire 1000 additional examiners and implement needed improvements in the PTO's information technology system. Of course, the budget must pass Congress, which has resisted funding for the PTO in the past.

Cease and desist letters and trademark rights: changes in the law.

by Deborah A. Loganimage of a demand letter

Receiving a cease and desist ("C&D") letter demanding that you immediately cease using a trademark or face potential litigation may be bewildering (even frightening). C&D letters typically request the recipient to transfer a domain name and stop infringing another's trademark. Because it may be the "first shot across the bow" -- a warning that legal action against the recipient may be forthcoming -- you should pay close attention to the legal claims contained in the letter.

Rarely should you ignore a C&D letter. Moreover, if you receive one and believe that your conduct is not infringing, you have a powerful option. If the letter creates a "real and reasonable apprehension" of litigation, you have the right to file a declaratory judgment action in which you may request the court for a judgment declaring that you have not infringed any rights or engaged in any other wrongful conduct. Clearly, the more direct the allegation of infringement in a C&D letter by a sender, the greater the risk that it can provide a basis for a declaratory judgment suit.

Until a few years ago, a C&D letter would not have provided grounds for a recipient to file a civil lawsuit against the sender. Article III of the U.S. Constitution requires an "actual controversy" before a federal court has jurisdiction over "cases and controversies". However, in 2007, the U.S. Supreme Court (in MedImmune v. Genentech) redefined the meaning of "case and controversy" and ruled that receiving a C&D letter provides an actual controversy, in the intellectual property context, giving rise to the recipient's right to file a federal declaratory judgment action.

If you receive a C&D letter, you should contact a litigation attorney versed in intellectual property law to determine the wisest course of action.

Robert J. Yarbrough has been awarded the highest possible rating by his peers.