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Re: trademark licenses and DFSG

On Sun, Oct 09, 2011 at 05:28:41PM -0700, Steve Langasek wrote:
> Has the project received competent legal advice stating that a package name
> would be interpreted as infringing a trademark, and that we might have to
> rename it?

We have now received such a legal advice. Actually we got two that
(incredibly enough) agree. I consider both of them to be "competent"
pieces of advice as they come from current and former SPI lawyers that
routinely work on trademark issues on behalf of Free Software projects.
Both lawyers were knowledgeable in US trademark law, and they've put
forward that bias.

Below you can find a summary of what we've got. Quoted text is an
outline of the inquiries I've submitted. Everything else is my own
understanding of lawyers' answers and I shall take the blame for any
inaccuracy in the summary. As it often happens with lawyers (and for
good reasons), it's very difficult to get definitive answers, so you
should imagine a big flashing "IT DEPENDS, BUT" before each answer.

> - can trademark policies restrict:
>   - package names in the Debian archive?
>   - program names in menus shown to the user?
>   - more low-level details such as executable names or program
>     installation paths?

The general principle is that everything that could cause confusion
among the users about the "product" they are getting or using could
induce trademark violations. Instantiating the principle to the above
three examples gives:

- package names would easily violate trademarks, as they are names used
  by Debian users to find and install software
- the same goes for name and logos in menus
- ditto for the main cmdline name used to invoke some CLI software
  (although this starts to be uncharted territory)
- the risk that other low-level / implementation details, that are not
  meant to be the primary user interface, violate trademark is very low
  (yeah, you never know...)

> - we understand that to live in the safe harbor of nominative use of
>   trademarks, we need to distribute a free software product in the
>   Debian archive "as it is". But what does that notion mean in the
>   context of free software?
>   - given that we don't do redistribution of upstream binaries, but
>     compile our own, does recompiling a program from source without
>     patching it benefit from the safe harbor of nominative use?
>   - does patching the source make it become a different product?
>   - if so, are all "patches" equal or are, say, patches that change the
>     visual appearance of a program more risky, copyright-wise, than
>     others?
>     (our main concern here is being able to apply security patches,
>     without having to get the agreement of the trademark owner, or
>     without having to rename the package just to apply the security
>     patch, which is difficult to do for a package which is part of a
>     stable Debian release)

The lawyers we consulted consider that it'd be quite easy to make a
convincing argument in court that $product + $patch != $product, opening
up to the risk of trademark infringement. The "default" interpretation
of nominative use seems to be pretty conservative.

More and more trademark policies for Free Software projects are starting
to care about explaining which changes would be considered as creating a
different product and which wouldn't. For those who do, recompilation is
usually granted the safe harbor of nominative use. Some allow security
patches explicitly, some don't. In the absence of such guidance from
specific trademark policies, we should better be conservative if we want
to be on the safe side.

It is unclear whether mere recompilation, no matter what a trademark
policy say, could benefit from nominative use. It seems to be uncharted
territory, at least in courts. (I've been promised further investigation
on this specific subject; I'll get back to you if/when I get more news.)

> - finally, we wonder what are the extents of the constraints that a
>   trademark policy can impose. In particular: can a trademark policy
>   rule upon which changes would be acceptable or not to stay on the safe
>   side?
>   - we know that many trademark policies do that, but we aren't sure
>     that what such policies do is actually permitted by trademark law

Trademark policies explain the official interpretation, at a specific
point in time, by the trademark holder of which practices are allowed
with the trademark and which are not. It is not necessarily a *valid*
interpretation, but they can go quite far, as long as they don't inhibit
nominative use. Given the rather narrow scope of nominative use in
trademark law, that's not as helpful as, say, fair use is for copyright

Hope this helps.

Considering all the above, I'll separately post a tentative summary of
this discussion.
Stefano Zacchiroli     zack@{upsilon.cc,pps.jussieu.fr,debian.org} . o .
Maître de conférences   ......   http://upsilon.cc/zack   ......   . . o
Debian Project Leader    .......   @zack on identi.ca   .......    o o o
« the first rule of tautology club is the first rule of tautology club »

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