[Date Prev][Date Next] [Thread Prev][Thread Next] [Date Index] [Thread Index]

Re: Ongoing Firefox (and Thunderbird) Trademark problems

I am not a lawyer.

I am a consultant trying to understand the world he lives in, and as such, studied the applicable law a little.

Eric Dorland wrote:

So, I don't feel I can accept the agreement offered by the Mozilla
Foundation, because of my objections to it and because I don't feel
empowered to make an agreement like this on behalf of Debian. If
however, the DPL wished to step forward and broker such a deal I would
not oppose (he is our elected representative for the project after
If the DPL does not step forward to make some sort of agreement, what
will I do? Renaming seems to be a very unpopular option. So I believe
my best option is to ignore the trademark policy altogether and have
the Mozilla Foundation tell us when they want us to stop using their

It should just be noted that such a move does have consequences as well. This is not a no-op move. The no-op move would have been to rename the package.

Now I originally said we shouldn't do this, but it does have
certain advantages. First of all, I think we can ignore the trademark
policy because it is only a policy, is not distributed with the
software (although having said that, that might change) and it is my
understanding that in most jurisdictions the trademark holder has to
police use of their trademark anyway.
Quite like the GPL, it boils down to whether we are required, by law, to have the MoFo's approval. If we are, then the policy holds true for us. If we are not, then not signing an agreement with them is a sane move.

Now the advantage of doing this is foremost to not have to rename
Firefox unless the MoFo ask us to. There is also protects us from
looking like the bad guy in the case of a rename (eg the /. headline
will read "MoFo tells Debian not to use 'Firefox'" rather than "Free
software nuts stop using 'Firefox'").

What it does not protect us from, however, is a lawsuit. I'm not saying MoFo would sue, but if they would, it would put the Debian project under complete legal liability. Normally, one can claim "innocent infringement", which means you are not liable for the infringement done prior to becoming aware of the problem. As a side note, this holds true for patents as well. In this case, however, we cannot claim that we did not know, as this has been discussed on a public forum.

Of course the other advantage is
not having to make an agreement that I think compromises our
Of course the disadvantage would be that by ignoring the issue we're
implicitly agreeing to the MoFo's proposal.

No, it's quite worse. By ignoring the issue, we are forcing MoFo to either sue us or lose the trademark. That's the way trademark law works. Just like we can no longer claim we didn't know these things were trademarked, they will not be able to claim they didn't know Debian was using their trademarks without an agreement. This means that if they don't do something legal to us now, they will never be able to do anything regarding their trademark to anyone else ever. In effect, not signing the agreement and keeping the name means that we are forcing them to sue or lose.

I'm afraid the only way of not taking an active stance on the issue of whether free software should have registered trademarks is to rename our version of Firefox. If we do not sign and not rename, we are taking an anti-trademark stance by forcing MoFo to take legal action against us (which will hurt them dearly as well), or to drop the Trademark idea. If we do sign the contract we're implicitly saying that we think that the MoFo course of action is the right way to go.

To put another way, once MoFo decided to issue a trademark, they have no choice BUT to ask Debian to sign such an agreement. Debian is too widely used for MoFo to claim they didn't know that we are infringing (and if they can't claim that, trademark law says they cannot enforce their trademark against anyone else), and they likely don't WANT us to stop using the name "Firefox". Both because they likely really do want the software to be free, and because that weakens the trademark, not strengthens it.

Two important notes:
1. The above is my understanding of trademark law, and does not include my opinion as for what we SHOULD do. Not being a Debian Developer (yet), I don't think my opinion on the matter matter that much. In any case, this is more down to personal beliefs than actual reasoned discussion. 2. I am not a lawyer, so the above may be a distorted view of the real state of affairs. The correct thing to do with anything I write on the matter is to take it to a real lawyer, and ask his/her opinion about it.


Shachar Shemesh
Lingnu Open Source Consulting ltd.
Have you backed up today's work? http://www.lingnu.com/backup.html

Reply to: