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Re: Logo trademark license vs. copyright license

On Sat, 14 Apr 2007 10:30:15 +0200 Arnoud Engelfriet wrote:

> Francesco Poli wrote:
> > 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.

What I am proposing is just licensing under both laws, but with two
separate grants of permissions: a copyright license (Expat) and a
trademark license (the one we are trying to write).
As long as I need both of them to do what I want to (that is to say, as
long as what I want to do infringes both copyright and trademark
rights), I have to comply with both sets of conditions.
As soon as I need only one of them, I can ignore the conditions written
in the other one.
That's why I think that having the same no-confusion condition in both
licenses is useless and potentially harmful.
Correct me, if I'm wrong.

> 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.

Which problem?
I don't understand why I cannot separately license copyrights and

As an example: I write an essay that includes the words "Microsoft",
"Windows", "Debian", and "Linux".  Assume this essay is my original work
of authorship: I am therefore its copyright holder.  I license its
copyright under the terms of the GNU GPL v2.
Nonetheless, those four words (which are not copyrightable) are
trademarks of their respective owners, and I cannot use them in ways
that break trademark laws (unless I have a trademark license that allows
me to do otherwise).
This is true, independently of the copyright license I chose for the
I don't need to insert trademark restrictions *into* the copyright
license, as they hold anyway.
I don't see any problem or contradiction in this.

> > 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.

They would need a copyright license to create a derivative work (and
they have one), but they also would need a trademark license to use a
confusingly similar logo to refer to something other than Debian (and
they do not have one, because the trademark license we are writing does
not allow this kind of use).
Hence, I cannot see why the trademark restriction should, in your
opinion, be restated in the copyright license...

> 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.

In my above-described example: does my GPL licensing of the essay allow
people to argue that they can change the text in such a way that it uses
the term "Microsoft" to refer to Sun Microsystems, Inc.?
As far as copyright is concerned, they need my permission, and they
indeed have it.
As far as trademark is concerned, they need a permission from Microsoft
Corporation, and they do *not* have one[1].

I still fail to see how a copyright license could trump a trademark

[1] unless they are Bill Gates, or a few others...  ;-)

> > 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.

That's why I say it should not stay attached to the heavily modified
image.  It should be dropped as soon as the trademark license is no
longer needed.
That suggests me to place the no-confusion condition inside the
trademark license, but not inside the copyright license... 

> 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.

What you are saying here makes perfectly sense to me, but seems to
confirm that there's *no* need to insert the no-confusing condition into
the copyright license...

> So I can't imagine a situation where the trademark restriction
> affecting the copyright license would be a problem.

I can't imagine a situation where it would be useful.
It could be awkward and misleading.

For instance, suppose you download an image representing a fish, which
happens to be a derivative work of the Debian swirl (after many, many
heavy modifications!).
That image is not confusingly similar to the Debian logo.
Hence, the only needed license is the copyright one.
You would receive the fish image with a copyright license and no
trademark license.
Suppose the copyright license stated that you cannot use the fish image
in commerce in such a way to cause confusion as to the affiliation, and
so forth, with the Debian Project and SPI.
Wouldn't it be awkward?

I mean: it's true, but the same holds for any other entity.
You cannot use the fish image in commerce to cause confusion as to the
affiliation, and so forth, with Microsoft Corporation, either.
But there's no need to state that inside the copyright license. 
Trademark laws say so.
Please note that, with the fish image, there's more or less the same
likelihood of causing confusion with the Debian Project and with
Microsoft Corporation: actually, close to zero...

> > 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.

You're right: that means that enforcing it through copyright is less
harmful (possibly harmless, but useless as well).

> 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?

As I said above, I think that none of them "wins".
One grants permissions as far as copyrights are concerned; the other
grants permissions as far as trademarks are concerned.
When you need both licenses, because you infringe both trademark and
copyright rights, you have to comply with both licenses.
When you only need one, you can ignore the other.

Or am I completely off-track?

 Need to read a Debian etch installation walk-through?
..................................................... Francesco Poli .
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