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Re: Trademark scope (just for the record)


On Thu, Sep 06, 2007 at 08:25:30AM -0700, Rick Moen wrote:
> > See http://bugs.debian.org/354622 for the full story. Sorry I didn't
> > include that link before, I was lazy.

> As usual for trademark claims, the complainer greatly overstates the 
> rights actually available to trademark owners[1].  Briefly stated,
> establishing a valid trademark entitles you to prohibit others in your
> same trade or profession from offering competing commercial goods or
> services[2] using your mark in a way likely to confuse your customers
> into thinking you have produced or endorsed the competing goods or
> services.  All other uses of the mark are automatically lawful.[3]

I don't think that Debian disagrees with this, so I'm not sure why you seem
to have reached the opposite conclusion (your implicit point seems to be
that Debian is ok to ship its browser as "firefox" without permission of

Perhaps you don't understand that it's our position that Debian and its
derivers need to have the freedom to make modifications to the browser
without being obligated to either get prior approval from Mozilla Corp. for
each change, or rip out the trademarks and/or rename the packages and/or
update all marketing materials that might mention the browser?  Even if we
were shipping a browser package today that was the same as the upstream
product (which we aren't, because of the logo change if nothing else), it's
entirely possible that in the future we would be shipping a browser
functionally different from the upstream one, so it's not obvious to me that
labelling such a browser "firefox" without qualifications would be
acceptable nominative use of the trademark.

Or perhaps you are assuming that all uses of Debian are non-commercial in
nature, and therefore not subject to trademark law?  I don't think this is
correct either; Debian itself is non-commercial, but there are plenty of
folks who distribute Debian or a derivative thereof commercially, and I
think it's not unlikely for such distributors to advertise their product in
terms of the applications it contains -- and if they were to say "includes
Mozilla Firefox", that would run afoul of the trademark because what it
contains is /not/ Mozilla Firefox, it's a modified version of firefox that
Mozilla Corp. doesn't want labelled with their trademark.

Finally, even if both of the above were negligible, there's still the simple
fact that it's not really worth our bother to have it out with Mozilla Corp
over this issue.  Given the ridiculous lies that have been spouted by some
in the Mozilla camp about Debian's handling of trademark issue, I can only
imagine the crap we would have had to endure if we had disputed the
legitimacy of their trademark claim.  Honestly, if that's how Mozilla is
going to treat folks in the Free Software community, is that really a brand
we want to be promoting for them anyway?

> The standard way to disarm any possibility of a valid trademark
> infringement complaint is to (1) state who owns the trademark, and (2)
> say that trademark-owning party doesn't produce or endorse one's
> separate offering.

Except that doesn't disarm at all in the specific case of using the
trademark to label an offering of your own which is a product in the same

> And open source people fall for it every single time -- but one.

I've been on the receiving end of a trademark-related C&D before, in
relation to an open source reimplementation of a popular board game.  The
lawyer that the game's creator had retained was, not surprisingly, quite the
slimeball and grossly overstated the creator's IP claims in the matter; but
the game in question was an innovative one that we enjoyed greatly, and out
of a certain sense of indebtedness to the game's creator we graciously
agreed to rename the software.

And we are still making nominative use of the trademark on the project
website, in spite of some of the lawyer's more egregious claims. :)

I don't think making a calculated decision about the tradeoffs of disputing
someone's trademark claim constitutes "falling for it".

Steve Langasek                   Give me a lever long enough and a Free OS
Debian Developer                   to set it on, and I can move the world.
vorlon@debian.org                                   http://www.debian.org/

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