Re: Logo trademark license vs. copyright license
Francesco Poli wrote:
> On Fri, 13 Apr 2007 22:28:15 +0200 Arnoud Engelfriet wrote:
> > If the Mark qualifies as an original work of authorship under
> > copyright law, then the above license includes the right to use, copy,
> > modify, merge, publish, distribute and sell the Mark or any derivative
> > work thereof, again subject to the above exception.
>
> Sounds good, except for one aspect that concerns me: we are trying to
> write a good *trademark* license; I would not complicate things further
> by trying to write a trademark *and copyright* license.
> I would rather avoid mixing those two areas of law.
I'm not sure that is possible. When we're talking about the logo,
it is protected both by copyright and by trademark. I can't copy
and distribute the logo unless I am licensed under both.
You could of course separately license the two. But then you run
in exactly the problem I tried to solve with the conditional
copyright grant.
> What concerns me most is making the copyright grant of permission
> conditional on the no-confusion condition.
I did that to ensure that people couldn't take the logo, change a
few pixels and then use the derivative logo in a confusing way.
If the copyright license doesn't tie in to the trademark license,
but instead says "do whatever you want with your derivative", people
could argue the copyright license trumps the trademark restriction.
> Suppose I derive a new image from the Debian swirl logo, and assume that
> my derivative work is sufficiently different that it's not confusingly
> similar to the original logo. It is my understanding that I would not
> need any trademark license to use my heavily modified image (not even
> for commercial use). Is this correct? I would instead need a copyright
> license to create and distribute my derivative work.
If the derivative image isn't confusingly similar to the trademark logo,
then the no-confusion condition does not apply. I don't think this is
an issue.
The only string attached to the derivative image is that it can't be
used in commerce in a way that creates confusion with the original
Debian logo. That is importing a trademark rule into a copyright
license, true. But this is also _the default_ under trademark law.
You are not allowed to use any sign in commerce that creates confusion(*)
with someone's trademark logo. It doesn't matter if your sign is a
derivative work of the logo under copyright law. I could be completely
ignorant of your mark, fiddle a bit with the Gimp and produce a swirl that
accidentally looks like the Debian logo. Copyright says I'm fine, but I
still can't put that swirl on CD-ROMs with an operating system and sell
those.
So I can't imagine a situation where the trademark restriction
affecting the copyright license would be a problem.
> In summary, I think that enforcing trademark-like restrictions through
> copyright would be possibly harmful...
This isn't a _trademark-like_ restriction, it is an actual
trademark restriction. There's a difference. In some copyright
licenses people try to create a pseudo-trademark by saying
"you can't use our name for anything except to refer to our
product". That goes beyond what trademark law allows you to do.
In essence, the trademark license I suggested (but TWNLA) says
"you are forbidden from doing what trademark law forbids you".
So this stays exactly within the bounds of trademark law.
An alternative would be to drop the exception on the copyright
license, and modify the trademark license to say
"The Mark Holder hereby licenses you to use the Marks *or
a modified version thereof* in any way...
You are not authorized to use the Marks *or a modified version
thereof* ..."
That makes it clear you are not licensed under the trademark
to use derivatives in a confusing way. It's not as clear
as what I previously suggested, because now you have to figure
out which wins: the copyright license that says you can do
anything, or the trademark license that says you cannot do
this one thing?
Arnoud
--
Arnoud Engelfriet, Dutch & European patent attorney - Speaking only for myself
Patents, copyright and IPR explained for techies: http://www.iusmentis.com/
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