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AbiWord, trademarks, and DFSG-freeness

Hi folks,

At Josh Kwan's request, I hopped into the IRC channel used by AbiWord
developers and had a brief chat with them about our concerns over trademark

Let me try to summarize their position as I understand it:

A) The existing trademark restrictions documented in
   /usr/share/doc/abiword/copyright are out of date, as is
   <URL: http://www.abisource.com/tm_guide.phtml >.  Unfortunately, there
   appears to be nothing available that supersedes these documents.
B) As far as I can tell, they feel that the trademark usage guidelines Dom
   Lachowicz communicated to Debian[1] should suffice for our needs.
C) They feel that because trademark rights are automatic and implicit
   (though you are in a better position to sue people if you claim your
   marks with a "(TM)", and better still if you register them with the
   United States Patent and Trademark Office, earning the right to put (R)
   next to your mark), that there is nothing unique about their situation,
   and Debian needs to solve "the trademark problem" for everything we
   distribute before singling them out for special attention.
D) They don't want to say anything more on the matter until and unless we
   can come back with some real lawyers.
E) At least some of them appear to feel that we don't understand the
   distinction between copyrights and trademarks.

It may be the case that the AbiWord developers interpret documents like the
DFSG[3] and OSD[4] as applying only to copyright licenses.  I am
speculating, but it would explain some of the strenuousness of their

It is my opinion -- and to my knowledge the general consensus of those
familiar with such documents -- that the DFSG and OSD (and the Free
Software Foundation's "four freedoms" for software[5]) are completely
neutral as to the legal mechanisms that are employed (even if by default)
to prohibit the exercise of users' prerogatives to use, copy, modify, and
distribute software.

Before proceeding, permit me to make the following observations:

There is a kind of "fair use" that applies to trademarks, just as there is
to copyrights.  Just because "IBM" is a trademark doesn't mean the IBM
Corporation has complete and arbitrary control over *all* appearances of
this word[6].  As far as I know, trademark holders cannot prohibit people
from using the mark to make factual assertions, write product reviews,
report on SEC filings, rant in newsgroups, and so forth.

It is my (weak) understanding that trademarks are mostly designed to
prohibit confusion in the marketplace, by providing legal remedies against
people who "pass off" a product as being something it is not, or
originating from some place that it does not.  In the U.S., the Lanham
Act[7] is the most often cited provision of federal law dealing with
trademarks in commerce.

Consequently, I think we need to be careful when modifying works that use a
trademark to identify themselves.  In the U.S., I can buy boxes of Cracker
Jacks from the store, advertise them, and sell them without the permission
of the Frito-Lay Company.  However, if I open those boxes of Cracker Jacks
-- say to mix in almonds or dried, pitted prunes -- and advertise and sell
the result as "Cracker Jacks", the Frito-Lay Company will probably have a
good case against me in court.

In the interests of full disclosure, I should mention that the AbiWord
developers I spoke to did not find the above analogy very persuasive.
Unfortunately, I was unable to figure out why.

Therefore, I think the biggest question for us is:

1) Do the default protections that attach to trademarks, even when
   unregistered and unmentioned (not even with a "(TM)"), infringe upon the
   freedoms the DFSG purports to defend?

Further questions are:

2) Do these default protections vary widely in the jurisdictions Debian
   typically has to cope with?  I know WIPO, the World Intellectual
   Property Organization, claims to have been working for years to
   "harmonize" issues of mark usage, but they also claim to do that for
   things like copyright terms, and what really happens is that copyright
   cartels see to it that the US and the EU keep leapfrogging each other,
   making the copyright durations longer and longer.

3) I don't know if the AbiWord developers are right about meaningful,
   strong, legal protections applying to potential trademarks if no notice
   of trademark status is made.  After all, common dictionary words are
   frequently trademarked.

4) Are we willing to retain counsel (on a pro bono basis, I'd advise) to
   research these issues further?

In lieu of pursuing all of the above questions exhaustively, I propose the

P1) Adopt a kind of don't-ask, don't-tell policy regarding implicit
    trademarks.  Many free software developers don't give a whit about
    trademarks, and some don't even care how much their software is patched
    by third parties while retaining the name.  So, if you maintain a
    package that doesn't assert any trademarks, don't worry about it.
P2) If a package does assert a trademark, contact the mark holder and ask
    for a trademark license that permits usage of the marks under the same
    terms as the copyright license that has been attached to the
    corresponding work, wherever applicable.
P3) If the trademark holder is not willing to do what we ask in P2), we
    need to find out what trademark license they are willing to extend, if
    any.  If they extend one, we will have to ensure that it satisfies the
    DFSG.  If they do not extend one, then if trademark law prohibits any
    DFSG-free actions, the package will have be moved out of main.  We may
    not be able to distribute it at all, depending on what we're restricted
    from doing, and if the package maintainer is unwilling or unable to stop
    doing whatever is restricted.
P4) As an alternative to P3), we can remove the marks from the package, and
    replace them with alternatives.

I therefore request that we research the answer to 1).  We do not seem to be in
situations P1) or P2) with AbiWord.  I'd like to ask the package maintainer
to offer his opinion on whether we should go with route P3) or P4) in the
instant case.

If we go with P4), I suggest we retain conspicuous notice of the package's
origins.  Possible ways of doing this include:
* the package description;
* the manpage;
* the splash screen;
* the About dialog.

I suggest the following language:
  "[NEW NAME] is derived from AbiWord(tm), a product of SourceGear

I don't think we are required to change the package name or command name,
but we might want to make abiword a virtual package, and manage the command
name via alternatives, in the event someone wants to package the
trademark-encumbered version.

I'd appreciate comments and feedback.

[1] See Message-Id: <C4067944-DA94-11D8-9171-000A95AB6C48@debian.org> in
    the archives of bug #258918[2].
[2] http://bugs.debian.org/cgi-bin/bugreport.cgi?bug=258918
[3] http://www.debian.org/social_contract.en-gb.html#guidelines
[4] http://www.opensource.org/docs/definition_plain.html
[5] http://www.gnu.org/philosophy/free-sw.html
[6] I'm given to understand it's not an acronym anymore.  Or was that AT&T?
[7] http://www.law.cornell.edu/uscode/html/uscode15/usc_sup_01_15_10_22.html

G. Branden Robinson                |     I'm not going to waste my precious
Debian GNU/Linux                   |     flash memory with Perl when I can
branden@debian.org                 |     do so much more with it.
http://people.debian.org/~branden/ |     -- Joey Hess

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