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Re: Trademark scope (just for the record)

On Fri, Sep 07, 2007 at 09:32:06AM -0700, Rick Moen wrote:
> Quoting Steve Langasek (vorlon@debian.org):
> > On Thu, Sep 06, 2007 at 11:50:21PM -0700, Rick Moen wrote:

> > > 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 was not suggesting that was the case.

Sure you were, because that's the class of use of the name "firefox" which
Debian backed down on.  You're asserting that Debian has done something
stupid when the reality is that you seem to not understand the word

> I was pointing out one huge clue, from the realm of everyday commerce,
> that should have alerted Debian users to the fact that, no, it is not
> true that one must ask a trademark owner's permission to use that mark.

> My point is that I've never seen any sign of awareness from Debian
> Project people or on this illustrious mailing list of that basic truth.

You don't need the trademark owner's permission for *nominative* use of the
mark (and certain other fair uses of a mark).  The uses of the trademark
that Mozilla Corp objected to were *not nominative*.

"Nominative fair use" means "it's ok to use the mark to name the original

"Based on Mozilla Firefox" is nominative use.

"Similar to Mozilla Firefox" is nominative use.

Naming a browser plugin that automatically handles legal filings on your
behalf "Litigator for Firefox" is nominative use.

This text in the iceweasel package description is nominative use:

  This browser is based on the Firefox source-code, with minor
  modifications. Historically, this browser was previously known as
  Firebird and Phoenix.

But referring to the browser that *Debian* ships as "Firefox" or "Debian
Firefox", in the user interface, is definitely *not* nominative use.
Nominative use is only a defense when you're using the mark to refer to the
*original* product of the mark holder!

> Mind you, that is not the only thing Bob could do to ward off Alice's 
> legal claim.  E.g., he could name his package Bob Earthbadger (or do you
> think Coca-Cola Company is able to bar sales of Royal Crown Cola?).

The Coca-Cola Company does not have a trademark on "cola", which is a
generic term.  Do you understand that "Royal Crown Cola" is not equivalent
to "Royal Coca Cola"?

> As http://chillingeffects.org/trademark/faq.cgi#QID52 says:

>   Nominative fair use

>   This is when a potential infringer (or defendant) uses the registered
>   trademark to identify the registrant's product or service in
>   conjunction with his or her own. To invoke this defense, the defendant
>   must prove the following elements:

>     * his/her product or service cannot be readily identified without
>       pointing to the registrant's mark
>     * he/she only uses as much of the mark as is necessary to identify
>       the goods or services
>     * he/she does nothing with the mark to suggest that the registrant
>       has given his approval to the defendant

First, this is not the wording of the 9th Circuit, which found in 971 F.2d
302 (9th Cir. 1992):

  If the defendant's use of the plaintiff's trademark refers to something
  other than the plaintiff's product, the traditional fair use inquiry will
  continue to govern. But, where the defendant uses a trademark to describe
  the plaintiff's product, rather than its own, we hold that a commercial
  user is entitled to a nominative fair use defense provided he meets the
  following three requirements: First, the product or service in question
  must be one not readily identifiable without use of the trademark [...]


That is, in the 9th Circuit, the precedent clearly states that the
nominative fair use defense is only valid when the mark is being used to
refer to the plaintiff's trademark and says nothing about whether the
*defendant's* product or service can be identified without the registrant's
mark, which is what the chillingeffects.org FAQ claims.

Second, in the 3rd Circuit where the language in the chillingeffects.org FAQ
seems to originate, the court also found that intent to confuse is a factor
in whether nominative fair use is a defense.  If we fork a browser named
'EarthBadger' and choose to call our own derivative product 'EarthBadger', I
don't see how you can seriously argue that our intent is *not* to cause
conflation in the minds of customers between our browser and the one the
customers are already familiar with.

Finally, even accepting the test of the 3rd Circuit (which is not binding
precedent in my jurisdiction, whereas the 9th Circuit decision is), and
assuming that some court buys the claim that we aren't really trying to
cause confusion, the 3rd Circuit Court's test still requires that "[our]
product or service cannot be readily identified without pointing to the
registrant's mark".  Perhaps you'd care to explain why you think our browser
can't be identified under a different name?

> Just for completeness's sake:  In Hughes's case, additionally, there was
> the difference that his trademark claim was very weak, since the
> founding editor had not transferred any commercial rights to SSC, during
> the period of the magazine's hosting, there.

This isn't "additional", this is the *central* point.  By statute,
registration can't be used to grant a mark to someone who had no rights to
the name in the absence of registration.  Linux Gazette was already trading
on the name, and SSC was not; that makes this a case of an invalid trademark
registration.  Now, perhaps someone found it easier/cheaper to throw up a
"nominative use" smokescreen defense than to try to get the trademark
registration overturned, but managing to effect a legal stalemate doesn't
give any legitimacy to the particular arguments used along the way -- for
that, what matters is what a judge rules.

> Second, I've been reading this mailing list for a very long time, and
> have seen absolutely zero discussion, ever, of actual trademark
> infringement obligations.  Discussion has always started and stopped
> with a trademark owner (or alleged trademark owner) dictating what
> he/she requires for _permission_ to use a mark.

> And that is what I wish to bring to an end.

Unless you can bring some arguments to the table that actually hold water,
that seems unlikely to happen.

> > 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.

> And how much caselaw do you want, Steve?  There's a ton of analysis of
> these matters over at http://chillingeffects.org/

Just one case would be a nice start; but as you're the one making the
extraordinary claims about trademark law that are at odds with both a
common-sense understanding of the purpose of trademarks, and my reading of
the statute and the case law that I've found, I don't intend to trawl
chillingeffects.org to try to produce your references for you.

> (E.g., you'll note that CentOS stupidly expunged all references to "Red
> Hat" and "Red Hat Enterprise Linux" upon receipt of a trademark demand
> letter from Red Hat Legal, and substituted vague references to "an
> Enterprise-class Linux Distribution derived from sources freely provided
> to the public by a prominent North American Enterprise Linux vendor."
> That's just undignified, to be that spineless and bully-able, just
> because you're ignorant and can't be bothered to consult standard
> information resources about law.)

Then maybe you should take that up with the CentOS folks instead of with
debian-legal.  Debian hasn't done anything even remotely this absurd in its
handling of the Mozilla trademarks.

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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