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Re: Trademark scope (just for the record)

Quoting Steve Langasek (vorlon@debian.org):
> On Thu, Sep 06, 2007 at 08:25:30AM -0700, Rick Moen wrote:
> > 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...

OK, that's good, because I often have a difficult time getting people to
believe that -- or even read carefully.  Let's trace out the implications:

> ...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 Mozilla).

I am not rendering the Debian Project legal advice (at least, not within
the meaning of my local UPL statutes ;->  ), so I will not address that
_specific_ question.  However, I'm glad to discuss the operation of
trademark law generally as to what is and is not trademark infringement
-- and it would also be fair game to discuss its application in past
cases, and in hypothetical ones.

> 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?

Trademark law never requires any such thing.  

(I guess I'll borrow the sordid lives of Alice and Bob from their
traditional usage in cryptography texts, for the following.)

Let's say Alice writes a Web browser and establishes its name, stylistic
elements, and logo as a trademark in her country, under free-software
licensing (but publishes a restrictive trademark policy, alongside that).  
Bob is part of the Bob Project, a free-software Linux distribution, and
ITPs his packaged version of Alice's browser.  Alice complains, charging
that Bob is violating her trademark policy in, e.g., by building the
software's directory layout for Linux in FHS fashion, and otherwise
complying with Bob Project Policy that conflicts with hers.  She
suggests that Bob bring his package into compliance by substituting a
different name, logo, and various trademark-encumbered stylistic
elements for hers.

Bob's a nice guy, but is not an idiot in legal matters, and so carefully
studies the nature of the trademark infringement statutes and caselaw.
He sends Alice a memo, which is polite and appreciative but doesn't give
Alice what she wants:

  Dear Alice:

  We at the Bob Project indeed agree that we should take the utmost
  care in respecting your brand identity for the Earthbadger Web
  browser, and thank you for calling our attention to your common-law
  trademarks and pending application for a Federal trademark at USPTO.
  Our understanding of trademark law is that we're obliged to ensure
  that users of our derivative work understand that Alice Company
  does not produce or endorse our version of the browser.  Additionally,
  it is helpful and good manners (albeit nowhere required by law) to 
  acknowledge your trademark claim.  In order to respect and protect
  your trademark rights, we will be immediately doing both of those

  As I write this, I'm uploading to the ftpmasters our new packages
  of Earthbadger, whose About Earthbadger screen and 
  /usr/share/doc/earthbadger/README.gz file now include the prominent 
  text "Bob Project's Earthbadger software build is not produced or 
  endorsed by Alice Company.  Earthbadger is a trademark of Alice Company."  
  When we hear that USPTO has issued your trademark registration, we'll 
  be glad to change the latter sentence to "Earthbadger is a registered 
  trademark of Alice Company."

  We believe the above to fully satisfy our obligation to avoid 
  trademark infringement.  Thank you for the reference to your trademark
  policy, but we are not aware of any obligation on our part to abide 
  by any terms within it, as long as we have satisfied our obligations
  under actual trademark law, which appears to be the case.  If you 
  know of any aspect of our Earthbadger package that is in any way 
  likely to confuse your customers into thinking Alice Company has 
  produced or endorsed it, please let us know, and we will correct it
  immediately.  Thank you for producing Earthbadger, which our users
  appreciate greatly.

  /s/ Bob

> 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.

I can only suspect that you are still under some misapprehension about
what trademark law actually requires, because the above doesn't appear
to have anything at all to do with third-party usage likely to create
confusion in the minds of the upstream company's customers -- which is
the essence of trademark infringement.

> Or perhaps you are assuming that all uses of Debian are non-commercial in
> nature, and therefore not subject to trademark law?

I most certainly was _not_ assuming all uses of Debian are
non-commercial, having been a Debian sysadmin and participant in the
Debian Project for untold years.  That is a truly bizarre speculation.  

(Your surmise that non-commercial use is "not subject to trademark law"
is overbroad, by the way.  Non-commercial use can still, for one thing, 
commit the separate tort of trademark disparagement aka tarnishment.)

> 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.

"We didn't understand the law, so we caved in and gave the trademark
owner what he said he wanted, and now don't want to talk about it any

Same old story.  However, my hope is that, the _next_ time this sort of
thing comes up, embarrassing capitulation in ignorance will not be the
tactic of first resort. 

> 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.

Please note that my point about what trademark law _does and does not_
require third-party users to do had _no connection at all_ to disputing
such trademarks' legitimacy.  If you think it did, you should re-read.

>> 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 field.

I can only suggest that you read what I said again, because it is
_exactly_ what one does when one's third-party offering is within the
same trade or industry.

> I don't think making a calculated decision about the tradeoffs of
> disputing someone's trademark claim constitutes "falling for it".
I referred to "falling for" the entirely false but nearly ubiquitous
assertion that one must secure a trademark owner's permission before one
may use the mark for a third-party offerings.  It's just not so.

Pepsico doesn't ask the Coca-Cola Company's permission to publish claims
that its sugar-water is better tasting than is Coca-Cola.  That ought to
be a big, fat clue, but far too many people have been successfully
conned and don't think about the implications.

Cheers,                             * Contributing Editor, Linux Gazette *
Rick Moen                       -*- See the Linux Gazette in its new home: -*-
rick@linuxmafia.com                       <http://linuxgazette.net/>         
(speaking for himself, in this case)

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