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Re: Trademark scope (just for the record)

On Thu, Sep 06, 2007 at 11:50:21PM -0700, Rick Moen wrote:

> > 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.  

When you are distributing a product which is similar, but not identical, to
the product of the trademark holder, using the trademark to identify it?  I
beg to differ.

>   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.

So, here's where I believe the problem lies.  I'm not convinced (and
won't be, without competent legal advice to that effect) that calling the
browser "Earthbadger", but posting a notice within "About Earthbadger",
satisfies the legal requirement to ensure that the users understand it's not
a product of Alice Company; and I don't believe that Alice would be sanguine
about this potential for confusion.

> > 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.

The nature of our disagreement seems to be in our differing assessments of
what's going to cause confusion in the minds of the customers.

> > 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.)

Well, it was you that brought up "commercial" in your earlier post...

> > 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
> more."

I think it's rather insulting for you to claim this is a lack of
understanding on our part.  You haven't exactly cited any case law to
support your position, and it's perfectly reasonable for Debian to not be
interested in becoming case law here.

> > 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.

By "their trademark claim", I meant "their claim that we were infringing
the trademark."

> >> 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.

That's why Microsoft trademark suit against Lindows.com was dismissed and
Lindows.com kept that name instead of changing it to Linspire, is 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.

You think that calling a non-Firefox product "Firefox" is equivalent to
*referencing* a competitor's product by name in one's advertising?  I don't
think I'm the one who is failing to understand trademark law here.

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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