Re: Python Software Foundation trademark policy

[MJ Ray <mjr@phonecoop.coop>]

Christmas came and this thread was dropped... just to tie off:

Gervase Markham <gerv@mozilla.org> wrote:
> MJ Ray wrote:
> > Passing off is a little different, so I don't want to confuse that
> > with trademarks. 
>
> That's not something I know much about; a reference on the difference 
> would be appreciated if you have one.

As I understand it, registered trademarks are handled by legislation,
whereas passing off is handled by case law.  Registered trademarks are
infringed if a mark is registered as specified, and used in a way
described in the act as restricted.  Passing off is a vaguer offence
that occurs if you impersonate someone else or their product.  There
are various summaries in civil court decisions:

  Lord Diplock in Warnink v Townend (1980) RPC 31 at 93 identified,
  from the cases decided before l980, five characteristics which had
  to be present. He said: "My Lords, Spalding v Gamage and the later
  cases make it possible to identify five characteristics which must
  be present in order to create a valid cause of action for passing
  off: (1) a misrepresentation (2) made by a trader in the course of
  trade (3) to prospective customers of his or ultimate consumers of
  goods or services supplied by him, (4) which is calculated to injure
  the business or goodwill of another trader (in the sense that this
  is a reasonably foreseeable consequence) and (5) which causes actual
  damage to a business or goodwill of the trader by whom the action is
  brought or (in a quia timet action) will probably do so." -- British
  Telecommunications Plc & Ors v One In A Million Ltd & Ors [1998]
  EWCA Civ 1272 (23 July 1998) URL:
  http://www.bailii.org/ew/cases/EWCA/Civ/1998/1272.html

> > How is "Python" being used by the distributor to label the shipped
> > version of CPython in any way that you can determine *during*
> > purchase?
>
> Let's modify the scenario, then. Let's say I am particularly keen to get 
> a Linux distribution which contains this Python language I've heard so 
> much about. I ask the commercial distributor at the stand: "Does this 
> copy of Debian contain Python?" Does he say:
>
> a) Yes
> b) No
> c) It includes a bit of software we call "python" which is based on the 
> official one from the PSF, and we hope it's fully compatible with it, 
> but we have no connection with them, etc. etc.
> d) Hang on, I have to call the PSF to get their approval before I can 
> tell you.
>
> a) is, I assert, trademark infringement. b) is misleading and unhelpful 
> at best. d) is clearly ridiculous. I suppose c) would be OK, but I doubt 
> that's the answer you would get in practice. If it's the only legal 
> answer, does Debian need to warn its distributors?

I suggest that a) may not be trademark infringement because the
language is also called Python and Debian contains an implementation
of that language.  A clueful distributor would say something like c)
it contains a python interpreter, but I agree that the standard of
distributor responses to these questions is sometimes not great.

I don't think Debian needs to warn its distributors - they should
already have noticed they are swimming in trademark-infested water,
thanks to the bugs about the debian trademark!

> > A bit of y, a bit of something like c and a bit of z.  My position is
> > that I do not understand why the distributor would *need* to infringe
> > the "Python" word trademark.  I see no need to use the Python mark in
> > the course of trade to distribute debian.  
>
> So, as I understand it, the use of the word Python in the Debian docs on 
> the CD is using the mark, but it's not in the course of trade?

Does a trade mark exist without trade?

> Does that mean if I give away my can's of Gerv's Cola labelled as Coca 
> Cola, instead of selling them, then it's not in the course of trade so 
> it's OK?

It depends why you are giving them away, but it may not be a trademark
offence.  (It may still be all other sorts of offence.)

> Or if I sell boxes labelled "Famous Name-Brand Cola inside", 
> and people open them after purchase and see cans of what looks very like 
> Coke, that's OK too?

I think that's almost certainly OK - it seems similar to the discount
mystery cases of wine that people buy from firms like Laithwaites.
http://www.laithwaites.co.uk/xsite~xsite~jan_mystery.xml~otbprefix~HP_JAN_L11_MYSTERY~mscssid~656BF4B532FF41AC849FED6D6219C91F.aspx
Sometimes it's the real deal, sometimes it's a near relative or the
vineyard next door.

> I admit this is a bit stretched, but I find it hard to understand how we 
> come to a position where Debian can label anything it likes with any 
> trademarks it likes in its distribution, as long as it doesn't write the 
> trademarks on the outside of the CD.

It's not quite that, but I can't figure out how the project would be
infringing the Python trademark in this situation.

Hope that explains,
-- 
MJR/slef
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