22 Oct 2004 cinamod   » (Master)

Battles with Debian Legal

I've spent bits and pieces (and 4-hour contiguous blocks) of the past week and a half in discussions with various Debian Legal representatives and other concerned parties with respect to trademarks, several of which are registered on behalf of AbiWord and are currently held in my name.

For reference, here are two relevant threads:

Debian Legal Thread AbiWord thread

Debian's initial concerns are indeed interesting and valid ones. They raise the question of how TMs and FOSS licenses such as the GPL interact, and what a downstream software distributor's role (such as Debian's) is in the matter. Is AbiWord + 3 patches from Debian really "AbiWord"? Can you call that product "AbiWord"? What TM rights are afforded to the resulting product? How does this affect distribution and modification rights as granted by the GPL license? And etc...

It should be noted that I am not a lawyer, and that this is not a court, save maybe a court of public opinion. It should also be noted that most (if not all) people on the Debian legal list that have participated in this discussion are not lawyers.

At this point, I'd like to point out that - in my opinion - there's nothing novel or specific to AbiWord in this specific problem, though AbiWord's (outdated) TM guide page may have been the catalyst for the discussion at large. "Firefox", "Mozilla", "OpenOffice.org", "Evolution", "GNOME", "Linux", and many others also have registered trademarks. Any action or proposed solution that is taken on behalf of Debian's AbiWord package would in all fairness have to be taken against these other packages as well.

I'd like to address points in Branden Robinson's email:

re: "A" and "C", I whole-heartedly agree.

re: "B" It should be noted that the remarks in [1] are off-the cuff remarks. I do not feel that they "should suffice" in the matter of our current discussion. I have claimed that:

B.1) Debian and perhaps other distros should have a standard policy for all products that have TMs

B.2) In lieu of #1 happening, the status quo is probably good enough. I harbor no ill will toward Debian and am generally grateful for the work they do on behalf of the community at large.

B.3) In lieu of #2 not being good enough, I feel that I've spent enough time arguing my case for #1 and #2, and concede that I'm tired of this discussion and of arguing. I suppose that this could be interpreted as "should suffice," but only if Debian [unwisely] is not willing to address the two above points.

re: "D", I've suggested that if Debian is serious about making an informed and legally persuasive decision regarding a TM policy in general, they would be wise to retain legal counsel. This is nothing more than good sense, and I would be quite disappointed in Debian if they did not do so.

re: "E", the point is inflamatory. But, like point "D", it is wise and prudent to be knowledgable of the problem at hand before entering a legal quagmire. Again, this is nothing more than good sense.

It should be stated that I have neither read nor have an opinion on DFSG[3] nor OSD[4], but grant that these documents most likely have nothing but the best intentions at heart. My protestations come from my cursory knowledge of Copyright and TM law as I've recieved from classes taken at the Harvard Graduate School, the GPL, the Lanham act, and the rights and obligations afforded therein.

Brendan is right that a kind of "fair use" rule applies to TMs. In fact, I've conceded that Debian's re-distribution of these packages may well fall under such fair use provisions, rendering this a non-issue.

I do not remember being present for Brendan's "Cracker Jack" example, though I may just be blocking 4 hours of IRC infighting from my memory. As far as my understanding allows, he is correct. If you empty a Cracker Jack box and put mixed nuts in it, you can't sell it as Cracker Jack. Whether what Debian does to its package qualifies as "mixed nuts" - well, as I said above regarding fair use - I'm unconvinced either way, but lean toward the "fair use" side.

re "2", organizations like the WIPO are moving to "harmonize" TM, Patent, and Copyright law around the globe. It is probably safe to assume that whatever course of action Debian pursues will apply to some several hundred countries.

re "3", there are varying degrees of TM strength, and the rules that decide the strength of the TM are kind-of fuzzy. "Bob's Pizza" isn't a good TM. "Guess Jeans" is a good TM, because the common dictionary word "Guess" is used in a manner that doesn't suggest Pants at all.

Restraunts like Fuddruckers have sought (and won) TM cases for the interior design of their establishment. No TM on said design was explictly registered. But the look and feel was deemed sufficient as to cause confusion.

You can also build up a TM without registering it, though those TMs are often applicable only to relatively small physical localities. I do not know how such locality would apply to unregistered TMs on the Internet. For a physical example, if you open "Bob's Pizza Shop" across the street from "Bobby's Pizza Shop", you will get taken to court and most likely lose your case.

You may place a (TM) next to almost anything you want, really. Whether or not it means anything depends on legal precedent and the circumstances at hand. If you go through the process of legally being permitted to put a (R) next to the (TM), you've got a much stronger case, and your mark is protected nation-wide.

Regarding Debian's suggested solutions:

re: "P1", this is an outright reckless suggestion that will only serve to get them into legal hot water. You won't be able to claim ignorance in court, should the need arise, if this email is brought to light. You can't claim ignorance of a problem as a course of action when you're so clearly aware that there is potentially a problem. That's laffable. The cat's out of the bag. You can't put it back in.

re: "P2", I've suggested that I'm willing to do so, if properly persuaded. Thus far, I've not seen a convincing argument. I believe that if the TM were under a GPL-like license, the TM would simply cease to exist. If everyone is free to do whatever they want with the artwork and name, no TM strength applies, as I have no recourse against "infringers". The TM becomes genericised, and ceases to exist. I don't pretend to speak on behalf of organizations like Novell, but I don't believe that they'd be too pleased to surrender the TM on "Evolution", as an example. Many folks may be OK with this. Many may not.

Therefore, the argument could turn into one of saying that GPL/LGPL/BSD/whatever licensed products are incapable of having a TM. I don't believe that this to be true, but am open toward being persuaded.

re "P3" and "P4", I believe these are reasonable suggestions.

I see a few possible outcomes, and with such emails bandying about, "status quo legal ignorance" is probably a very stupid decision.

Outcome 1) Licenses like the GPL conflict with the very notion of TM. Products like "AbiWord" don't have a TM.

Solution 1.a) Nothing required on the part of Debian. AbiWord, Firefox, and the like take down their TM notices.

Outcome 2) The GPL affords you the right to do whatever you want to the code itself, provided that those modifications don't conflict with TM law. You can take AbiWord, make the "C" key insert pr0n, and redistribute it. But you can't call it "AbiWord".

Solution 2.a) Debian and other redistributers and modifiers must alter the names, artwork, and etc... of the products they distribute, possibly regardless of whether a TM is registered or not.

Solution 2.b) Debian gets folks to sign some sort of agreement licensing the use of the TM.

Solution 2.c) Debian and others stop distributing their modified works.

Outcome 3) What Debian is doing falls under "fair use" law.

Solution 3.a) Nothing to be done with respect to Debian or the TM holder.

There may be more outcomes and potential solutions. I don't pretend to know them all. What I can state firmly is that in this case, I'd personally prefer to retain ownership of my Marks, but allow organizations like Debian to use them.

It should be noted that I'm not out to "get" Debian or anyone else for that matter. At the time, the "status quo" was a reasonable course of action, and I honestly couldn't have cared less. "Don't rock the boat", in legalese. But now that the issue has been raised, and I've spent so many hours, some concrete solution must be reached. Claiming ignorance of the wolf is stupid once you've seen the wolf amidst your sheep.

In my opinion, I've never brought up the issue, though the TM guide on my website may appear otherwise. The document you see there, complete with my name on it, is the result of running the equivalent of a sed script on some source files when SourceGear Corporation stated that they intended to transfer their Copyright and TM to me. I did not write the TM document, though I symapthize with the message that SourceGear was trying to convey. I also sympathize with Debian's and the FSF's goals. I also kind-of like that I own the rights to that cute little TM'd ant, a tangible symbol of my 4 years involvement and maintainership with the AbiWord project.

Finally, it sould be noted that Debian's very own name and logo are TM'd.

"Debian is a registered trademark of Software in the Public Interest, Inc."

If Debian are truly interested in the Freedoms they wish to impose upon others' packages, I suggest that they first start at home. If my and other's actions are objectionable under their guidelines, then I ask how this is not:

"Although Debian can be obtained for free and will always remain that way, events such as the problem with the ownership of the term ``Linux'' have shown that Debian needs to protect its property from any use which could hurt its reputation. Debian has decided to create two logos: one logo is for official Debian use; the other logo falls under an open use type license."

Their "Two Logos" policy is a nearly identical in form and message to AbiWord's published TM Guide policy. As if AbiWord's TM guide "forced the issue." Such a view may prove to be either laffable or hypoctical, or merely shortsighted.

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