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

Re: Ongoing Firefox (and Thunderbird) Trademark problems

* Shachar Shemesh (debian@shemesh.biz) wrote:
> 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
> >all). 
> > 
> >
> >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
> >marks.
> >
> 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.

Renaming the package is hardly a no-op. 
> >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.

They will have no grounds for a lawsuit. They know exactly what we're
doing, we told them. All they have to do is tell us to rename the
package, and I will comply as quickly as I possibly can. 

> >Of course the other advantage is
> >not having to make an agreement that I think compromises our
> >principles. 
> >
> >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.

They will not sue us. It would make no sense, when asking us will
accomplish the same thing. 

> 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.

There is no reason for MoFo to compel us to make this sort of
agreement. I don't see any reason they cannot include in their
trademark policy more permissive uses of the mark. Other projects have
done similar things. 

> 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.

Eric Dorland <eric.dorland@mail.mcgill.ca>
ICQ: #61138586, Jabber: hooty@jabber.com
1024D/16D970C6 097C 4861 9934 27A0 8E1C  2B0A 61E9 8ECF 16D9 70C6

Version: 3.12
GCS d- s++: a-- C+++ UL+++ P++ L++ E++ W++ N+ o K- w+ 
O? M++ V-- PS+ PE Y+ PGP++ t++ 5++ X+ R tv++ b+++ DI+ D+ 
G e h! r- y+ 

Attachment: signature.asc
Description: Digital signature

Reply to: