Blueprint of a gear train.

 Robert J. Yarbrough
Patent Attorney

 Patents - Inventions - Trademarks 

Newsletter Issue 14 - April, 2010

In this issue:

Cyberspace is expanding.
Can I sell photos that I take?
Planning for events beyond your control.
Patent reform is not dead.

Expanding Cyberspace beyond ".com"

by Deborah A. Loganimage of space

The Internet Corporation for Assigned Names and Numbers ("ICANN") has proposed a program to introduce new top level domains ("TLDs"), which it states "will bring about the biggest change in the Internet since its inception nearly 40 years ago."  Presently, there are approximately 21 functioning TLDs and 250 country code extensions.  In June 2008, the ICANN board approved the selling of new TLDs to compete with <.com>, <.org> and other current TLDs.  ICANN's new plan will allow for extensions of 3 to 63 characters long with support for Chinese, Arabic and other non-English scripts.  Although ICANN planned the program roll out for early 2009, it has yet to be launched.  Its journey toward implementation has been a bumpy one, largely because of interests who believe the new system will create havoc in cyberspace.  

Under the current draft rules, an applicant may apply to register any name or word as a new TLD (i.e., <.books>, <.jewelry>, <.sports>, etc.).  Registration is not automatic, however, and the fees and operational requirements are expensive and daunting.  The applicant is required to pay a fee to ICANN of $185,000, which is due and payable whether or not the new TLD is registered.  In addition, there is an annual registry fee ($75,000 or 5% of transactional revenue, whichever is greater), an extended review fee of $50,000, and a number of other fees and costs.  

Trademark holders who own large portfolios of domain names fear that the new program will create a wave of cybersquatting, phishing and malware, and additional drain on their finances.  Many companies who have spent years purchasing domain names and building websites around the original list of TLDs are not happy about restarting the process.  Indeed, the new TLD program may compel trademark holders to defensively register numerous additional domains (or even numerous TLDs) to protect their marks and prevent potential consumer confusion.

Recently, parties with trademark interests, have also been pushing for substantial changes in trademark protection under the new and perhaps the existing TLD program (<.com>, <.net> and <.org>).   One of the most controversial suggestions is a no-cost quick take-down procedure that would substitute for the Uniform Domain Name Resolution Process (UDRP), for allegedly abusive domains.  This quick take-down procedure, unlike the UDRP, would occur without notice to the domain name registrant, leaving him/her without a pre-order defense.  Whether these remedies will be implemented remains to be seen.

Ask Dr. Copyright: Can I freely sell photos that I take?

By Lawrence Husick

Dear Dr. C:Dr. copyright image

I want to publish and sell a line of postcards. I think that I am a pretty decent photographer, and I travel a lot, so most of the pictures will be photos that I have taken on my travels. Is all of this legal?

Signed, Shutter Bug

Dear Ms. Bug:

As with most questions, the answer is "yes, and no". Yes, you are free to take photographs of most things. There are, however, exceptions. You may photograph the natural world. You may photograph most buildings, and most people in public. You may need permission to snap a picture of a work of art, and some buildings may themselves be considered works of sculptural art. Copyright protection does not last forever, but may last as long as 70 years after the death of the creator (and that date is seldom marked on the cornerstone of the building!) Laws differ from country to country. You may also give up your right to take photos in return for admittance to some places, such as museums and performances. Some areas may be off limits for national security reasons, even if they are otherwise public (so please don't hang around the gate at your local nuclear power plant snapping away unless you want to explain yourself dozens of times to law enforcement officers.)

Another legal wrinkle is trademark law. Particularly famous buildings, people and characters may function as trademarks, and the owners may object to your selling something that implies sponsorship, association, or origin with the site. In one case, a photographer took a picture of the Rock and Roll Hall of Fame in Cleveland, made a poster of that photo -- with the words "Rock and Roll Hall of Fame" -- and was sued for trademark infringement and unfair competition. The museum, you see, also sold similar (though not identical) posters in its gift shop. He was not found liable, but I suspect that his legal bills in defending himself amounted to more than he made selling his poster.

Dr. Copyright hates to say this, but better safe than sorry. If you're going to invest in your postcard business, it would be wise to have your photos and layouts reviewed by an intellectual property attorney; avoiding legal issues is much easier than finding yourself in a law suit.

Eyjafjallajokull - Force Majeure

by Adam Garson

The interruption caused by Eyjafjallajokull has beenimage of volcano in Iceland devastating. Putting aside the personal inconvenience and expense suffered by airlines, passengers and the travel and vacation industries, the consequence to other businesses has been far reaching -- missed deliveries and shipments, upset production schedules, canceled meetings, delayed or canceled business deals, and more. Believe it or not, one source indicates that Eyjafjallajokull is not even among the ten most dangerous volcanoes in Europe, outranked by Vesuvius, Campi Flegrie, and Etna in Itally, Agua de Pau, Fumas and Sete Cidades in the Azores and Hekla in Iceland, among others.

So how do businesses deal with events that they cannot predict or control? In the world of contracts, it's the "force majeure" clause that protects the parties when they cannot perform because of unforeseen events. "Force majeure" literally means "greater force." A typical force majeure clause reads:

Company shall not be responsible for damages by reason of any strike, war, riot, insurrection, civil commotion, fire, flood, accident, storm, or any Act of God or any other causes beyond the control of the Company.  

Pennsylvania courts -- the few that have considered the force majeure clause -- have held that such provisions will only protect parties whose performance is prevented by events beyond the "reasonable control" of the parties. Certainly, war, floods, earthquakes, and volcanoes fall under this category.  

These are easy cases, but how will courts view situations where a party's performance is only frustrated by natural events, not prevented; or when government regulators prevent a party to perform under its contract (Rohm & Haas Co. v. Crompton Corp., Kaplan v. Cablevision of Pa); or if performance is prevented by a labor strike (Aquila, Inc. v. CW Mining)? In these situations, courts tell us that they will look to the intent of the party as expressed by the language of the force majeure clause. Does the language of the clause protect a party who partially performs? Does it specifically include failure to perform caused by government regulations or labor strikes? Make sure your contracts contain a force majeure clause and make sure it is specific enough to protect you from those rare events that affect your industry. Unfortunately, nobody has a crystal ball.

(Thanks to Arnold Winter; photo by David Karnå, licensed under Creative Commons License)

Patent Reform is Not Dead

by Robert J. Yarbroughimage of PTO seal

The reports of the death of patent reform have been greatly exaggerated.   A bill labeled 'patent reform' has been proposed for each of the last several years, but has never been able to garner the votes necessary to pass both the House and Senate.  The reason is that the various patent constituencies have very different goals and interests.

An important compromisehas been reached between Senate Judiciary Committee Chairman Patrick Leahy and Committee Ranking Republican Jeff Sessions, gaining Sen. Session's support for the Patent Reform Act of 2009 (S.515).  The Obama Administration is in favor of patent reform and exhorted Leahy and Sessions to action as recently as April 20, 2010.  To move the bill, Sen. Leahy is using a special Senate procedure known as a "hotline," which does not involve debate and does not require a vote.  Each Senator is given the opportunity to object, known as a "hold."  If any Senator places a "hold," the bill does not proceed.  If no Senator objects, the bill is passed by unanimous consent.

Although we are not privy to the compromise reached by Senators Leahy and Sessions, we can anticipate that the bill will include many of the inventor-unfriendly elements present in the last several patent reform bills, including  a change from 'first to invent' to 'first to file' and limits on damages for patent infringement.   A recent 'Manager's Amendment' amends the bill to eliminate the effect of recent false marking court decisions.  Stay tuned.

Robert J. Yarbrough has received the highest possible rating from his peers.