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[Some e-mails quoted below have been re-edited to update or correct their contents, as this page is intended as a reference work.]

From rick Sun Jul 6 12:11:31 2003
Date: Sun, 6 Jul 2003 12:11:31 -0700
To: license-discuss@opensource.org
Subject: Re: Open source and trademarks
In-Reply-To: 200307061139.35954.ihab@ahc.umn.edu
User-Agent: Mutt/1.5.4i

Quoting Ihab Awad (ihab@ahc.umn.edu):

> What are the implications of trademark ownership regarding Open Source
> software?

Less than you might think.

[You register and use HappySoft as a trademark in a particular field for a particular piece of software, and publish statements like:]

> HappySoft and the "smiling person" logo are trademarks of the HappySoft
> Organization, and may not be used or duplicated without permission.

You can say that — and might be well advised on self-interest grounds to aggressively enforce your trademark against anything that even looks remotely like an infringer (lest you lose it) — but that does not make it so, as a matter of law (the Federal Lanham Act, in the USA).

By no means does all third-party use of your trademark constitute infringement, not even within your specific industry. A registered trademark entitles you to a monopoly over brand identity. That is, you're entitled to bar only usage of your distinctive mark that incorrectly suggests your offering and endorsement of someone else's goods or services (within your specific industry).

It does not, for example, entitle you to bar a notice that...

This YaySoft[tm] program smoothly interoperates with the HappySoft[tm] software suite. HappySoft[tm] and the smiling-face logo are registered trademarks of Ihab Awad, who neither produces nor endorses this software.

...because that usage doesn't create such a false impression and, to the contrary, goes to some lengths to prevent it.

My recollection is that the legal standard applicable to trademarks is that infringing use must tend to create such confusion in the mind of a "reasonably prudent" customer. There are factors commonly considered, in the case of doubt:

[establishment of derivative work YaySoft snipped:]

> However, the restricted-usage HappySoft marks remain in the
> original source code (which, per the applicable license, they
> should not be required to modify in order to redistribute or
> include in their derivative work).

But nothing bars creators of derivative works from either (1) removing that expression of the HappySoft trademarks, or (2) accompanying it by a statement like the indented one, above.

> 1. Do the authors of YaySoft in this way infringe on trademark law,
> or, conversely —

It depends on their product's impression in the minds of "reasonably prudent" users.

> 2. Do I as the author of HappySoft, by embedding restricted trademarks
> in the source code, violate the Open Source Definition?

You would not, since it is still eminently possible to use that source code with all OSD-specified freedoms.

Please note that the Apache licence incorporates protection of the Apache brand.

(I am not a lawyer. This is not legal advice.)

-- 
Cheers,              First they came for the verbs, and I said nothing, for
Rick Moen            verbing weirds language.  Then, they arrival for the nouns
rick@linuxmafia.com  and I speech nothing, for I no verbs. - Peter Ellis

[Note: Items below are correspondence to three Linux Gazette readers who had sent e-mail to the magazine staff.]




billg wrote:

> It's worth asking why the Linux Gazette crew didn't seek to
> protect that name?

Names can be reserved against some certain sorts of commercial use within one's industry segment, through use of trademark law. Please hold that thought, which I'll return to in a moment (and remember that I said commercial use).

> Copyright on the material that appeared in the Gazette during its
> time under the SSC umbrella is, presumably, accounted for by the terms
> of the agreement between the Gazette and SSC.

Copyright title remains with each item's author, and published material is open-source licensed under the Open Publication Licence v. 1.0. This is true of all issues of recent years. A slightly different but OPL-like licence was used before that, and contents of issues #1-8 in 1995-6 were BSD-licensed.

> However, the name itself might have been trademarked years ago,
> making this current dispute moot.

There are more misconceptions in the Linux community over trademark law than pretty much any other legal concept, in my experience. (I'm not saying you personally are necessarily under such misconceptions.) Let's go over the matter:

1. You can establish a trademark without registration, by merely using it and establishing a brand identity. This is called common-law or "state" trademark, and exists (in the USA) subject to regulation by state law. By using a distinctive mark (name, logo, style), you gain a limited monopoly over the use of the brand in business — limited to your industry and geographical area. Specifically, nobody else (in the same geographical area and industry) may lawfully use your mark for a competing commercial product in such a way as to mislead customers into thinking the trademark owner endorsed or produced the competing goods.

SSC has recently gotten into the habit of putting "TM" next to the words "Linux Gazette", which ("TM") is an unregulated symbol used to indicate a common-law trademark assertion. (In 2005, on Wikipedia, an SSC employee asserted that SSC claims to have "held a trademark in the state of Washington" on some prior occasion, but this conveys no title, and is just an assertion of a claim.) The "TM" symbol has no legal force, and is not required to have any legal merit behind it. It should not be confused with the R-in-circle symbol, which in the USA may by law be used only next to paid-up Federally-registered marks:

(Please note that nobody can be required to use "TM" nor R-in-circle alongside citations of other people's trademarks, regardless of those trademarks' legal validity or strength: There is simply nothing in trademark law creating any such entitlement. The R-in-circle symbol is legally regulated in the sense that you are prohibited from using it in relation to your commercial goods/services unless you've paid USPTO for the right to do so (concerning those goods or services); that is not the same as requiring any party to use it, which simply cannot be compelled at all — regardless of trademark owners' ongoing implications and dire hints to the contrary.)

2. You can register your (US-based) trademark with the US Patent and Trademark Office (USPTO), for ten years at a time for about US $330 per decade. This gives your trademark nation-wide coverage (within your industry), and I believe also some broader enforcement powers — but the nature of what third-party uses you can enjoin is otherwise the same. (Neither SSC nor anyone else has filed for Linux Gazette marks.)

[RM addendum at 2007-08-07: Shortly after this e-mail, SSC did file with USPTO for a service mark (see below) — but then still later abandoned that application.]

3. The only consequence of being the first person to successfully assert a particular trademark within a given industry (with or without registration) is that you get to enjoy the monopoly over customers' impression of that brand identity in your area of business.

4. Recently, any valid trademark has also been held to be privileged against "disparagement", defined in Black's Law Dictionary as a "false and injurious statement that discredits or detracts from the reputation of another's property, product, or business". The idea is that if your use of a trademarked image drags a valuable trademark (in what can be argued as being) through the mud, e.g., you show Mickey and Minnie Mouse in flagrante delicto, then you've committed the tort of trademark disparagement even if your usage was otherwise privileged, e.g., because it was non-commercial.

5. You may have noticed a recurring theme in the above — maybe because I've said it before. A valid trademark (of either sort) can be used only to enjoin sale of goods offered in commerce that wave about your trademarked brand in a way tending to convince customers that you (the trademark owner) produced or endorsed the competing goods. That's it. That's all trademark gets you.

[RM addendum at 2007-08-07: Just for the sake of thoroughness, a trademark associated with a commercial service as opposed to commercial goods is technically called a "service mark", which is a subcategory within the umbrella concept of trademarks in the larger sense of that term. A third subcategory also exists: "certification marks" can be established regarding product certification programs. For example, the Open Source Initiative offers qualifying businesses the right to use a certification mark called "OSI Certified" concerning software used in commerce in a way that satisfies the Open Source Definition.

All three types of marks — trademarks in the strict sense of that term, service marks, and certification marks — can be optionally registered in the USA with USPTO. All three types of marks can be, instead, validly established through usage alone.]

So, people often confuse two separate questions:

So, finally, to respond to your comment: No trademark registration exists, any common-law trademark is of doubtful nature and ownership — and, moreoever, it could be used only to enjoin certain sorts of uses of the mark in commerce, which means the Linux Gazette magazine inherently could not infringe such a hypothetical trademark, being entirely non-commercial.

There's a tremendous amount of nonsense promulgated about trademark law. Here's Cory Doctorow of EFF, explaining trademark law and detailing just how badly people tend to misunderstand it: http://www.openp2p.com/pub/a/p2p/2003/08/14/trademarks.html

Example of a "trademark disparagement" legal action: http://www.chillingeffects.org/protest/notice.cgi?NoticeID=652

General overview of trademark law: http://www.law.cornell.edu/topics/trademark.html

Rick Moen
rick@linuxmafia.com


Scarhill wrote:

> The registration date is October 28, 2003, even though Linux
> Gazette has been publishing since '95. Sounds like SSC decided to
> register the trademark only when they realized they had a problem. That
> registration might be succeptible to challenge.

Or everyone could just let SSC, Inc. buy its $330 10-year (alleged) limited monopoly over a commercial brand identity (service mark), and just keep publishing Linux Gazette, because the one doesn't have a lot to do with the other.

Our non-commercial monthly community magazine (Linux Gazette) moved by unanimous decision of its staff to http://linuxgazette.net/ as of the November 2003 issue. For seven of the preceding eight years, SSC, Inc. was kind enough to assist LG by giving it hosting and allowing some of its staff to assist production during work hours, for which we are quite grateful.

Our decision to move was motivated by a number of things, including SSC's unexplained, unannounced, retroactive deletions from prior issues' articles, its stripping of authors' copyright notices and substitution of its own corporate one (e.g., http://www.linuxgazette.com/node/view/58, http://www.linuxgazette.com/node/view/61), and its proclaimed plans to make LG cease being a magazine and cease having editors, turning it into solely a dynamic Web site.

After our move of the magazine to new quarters, SSC to our astonishment produced a November issue purporting to be Linux Gazette, immediately after our November issue went to press. (This was surprising because we'd been told they intended that monthly magazine issues cease.)

To our further surprise, SSC, Inc. suddenly asserted posted "TM" symbols next to its copies of our magazine's logo (including all back issues), and started asserting in public that it owned trademark over the magazine "brand" identity. This was surprising because (1) SSC didn't start SSC, (2) SSC's assistance of founder John M. Fisk was specifically so that LG could remain a non-commercial community magazine, and (3) trademark is a commercial property right.

We were further surprised to learn that SSC, the day following our notifying SSC of our departure, filed a US $330 fee and application form with the USA Patent and Trademark Office asking for recognition of "Linux Gazette" as a service mark of SSC, Inc., asserting they made first use of it in commerce in 1996. This was surprising for a number of reasons: (1) The magazine was founded in 1995, not 1996 (by John M. Fisk, not SSC). (2) To our knowledge, the "mark" has never been used in commerce (and the whole idea of SSC helping was to keep the magazine non-commercial). (3) The correct symbol to use to claim a service mark (the term for brand insignia of commercial services as opposed to commercial goods) is "SM", not "TM".

(Update: Upon our review of trademark caselaw, we at Linux Gazette found that the Federal Lanham Act's requirement that trademarks be "used in commerce", stated in 15 USC 1051(a)(3)(C), is merely a legal term of art limiting the reach of the Federal act to its constitutionally prescribed bounds — i.e., the Interstate Commerce Clause. Judges have construed "commerce" for this purpose in the broadest possible sense, such that basically the use of a mark to brand anything in general, even if not for profit, would qualify as use in commerce. Naturally, state statutes used for common-law coverage lack even this vestigial "commerce" requirement. In any event, at my urging, to deal with SSC's alleged encumbrance on the magazine's title, Linux Gazette added the following notice to the Web site front page plus all issues: "Legal notice: Linux Gazette is not produced, sponsored, or endorsed by its prior host, SSC, Inc., which has been known to assert trademark claims despite our founding editor having clarified that he conveyed no trademark rights to them and that the magazine was to remain non-commercial.")

[RM comment on 2007-08-07: In late 2006, we discovered that the US Patent and Trademark office had dismissed SSC, Inc.'s trademark application because the firm had failed to complete the application process. Essentially, SSC abandoned the USPTO application effort and lost the $330 filing fee. Also in late 2006, SSC discontinued all use of Linux Gazette's former domain (linuxgazette.com), replacing its mostly derelict, automated, Drupal-based Web site at that location with an http redirect to the Linux Journal Web site. SSC then spun off the entire Linux Journal magazine business to an apparently new firm in Houston, Belltown Media, Inc., run by longtime LJ associate publisher Carlie Fairchild. Belltown Media also took over operation of the "IT Garage" Web site, thus far seemingly just a blog for longtime SSC writer Doc Searls. Oddly, SSC, Inc. seems to have retained ownership of the magazine-related linuxjournal.com Internet domain — along with ownership of itgarage.com plus our former home, the linuxgazette.com domain. The Linux Journal and IT Garage sites continue to run the Drupal content management system that SSC favoured.]

Our understanding of trademark law is that, if the court judges a trade/service mark to be legitimately your property (which seems unlikely in this case), then you're empowered to enjoin competing commercial interests from using that mark to sell a competing product/service, within the same trade/industry segment, in any way likely to confuse customers into thinking you (rather than the competitor) produced or endorsed it. The alleged owner is obliged to enforce this claim through civil litigation (or risk losing the mark, through it becoming generic). Federal registration of a claimed mark gives broader geographical coverage of this right, and greater enforcement rights.

Please note that LG (at linuxgazette.net) remains a completely non-commercial magazine, which would appear to put its operations outside the normal scope of trademark law (leaving aside questions of validity and ownership). So far, we've received no legal threat from SSC, Inc., which is gratifying — and we're concentrating on continuing to publish the magazine as we have for eight years. The December issue — with a CSS stylesheet facelife and nicer logo — will appear in a few days. As always, we're delighted to receive submissions for publication, or new members of the Answer Gang (http://lists.linuxgazette.net/mailman/listinfo/tag).

Last, I'd personally like to stress that we consider SSC staff our natural friends and allies, and look forward to this entire thing blowing over, including the continued evolution of their www.linuxgazette.com Web site, whatever it ends up being called. Two thriving Linux publication outlets are even better than just Linux Gazette, and we wish them all possible good fortune.

Rick Moen
Contributing Editor, Linux Gazette


To: tag@linuxgazette.net
Cc: Mike Orr , phil@ipal.net
Subject: Re: [TAG] about the spat over the name LinuxGazette.

Quoting Phil Howard (phil@ipal.net):

[about linuxgazebo.{com|net|org}:]

>I was just reading Slashdot about the spat over the name
>LinuxGazette. While I like linuxgazette.net better than 
>what linuxgazette.com has become, I can also say you are 
>definitely in a bad spot over the name issue.  Just changing 
>the name is the best thing to do.  So I thought about some 
>names and checked to see what was already registered or not.  
>I found one maybe you might like.  It is kind of close so I 
>don't know how much SSC will bitch, but I do think it's 
>sufficiently different that SSC will lose the community support 
>if they sue over this much of a difference in name.  And it 
>appears that all 3 primary generic top level domains (com, 
>net, org) have this name available: LinuxGazebo

Thanks, Phil.

So far, all SSC have done is file a Federal application for trademark registration (as a service mark) — the very same day they received our notice of having taken the Gazette elsewhere, oddly enough. The application claims that SSC, Inc. used the mark "in commerce" in 1996 — which strikes me as both dodgy and a violation of promises made to founder John M. Fisk.

They have not chosen to take the next logical step and send a threat letter, and our understanding is that this owes significantly to many SSC employees urging Phil Hughes to not take such a disasterous step.

However, Mr. Hughes claims that SSC's sole reason for carrying out the trademark registration is to "protect" the name. OK, cool, he can to do that, I guess — if any court will buy the very doubtful assertion of SSC enjoying title at all. But that would buy SSC the right to bar confusingly similar uses of the mark to offer competing commercial goods/services to the public in a way likely to confuse customers into thinking the trademark owner produced or endorsed them.

That's all that a trademark (if established to be valid and owned by you) buys you. Federal registration of that trademark gives you greater geographical coverage for that protection against commercial brand confusion, and somewhat greater enforcement power. That's it. A lot of people seem very confused about that.

And guess what? The Gazette isn't commercial. So the whole trademark threat (as applied to us) is a giant bluff.

There are also two separate and newer bodies of trademark law: One is caselaw concerned with trademark "disparagement" (also called "tarnishment"): If I publicly use someone else's trademark in a way that drags it through the mud in some unsavoury or unwholesome way, e.g., uses it in pornography, then I've committed the tort of trademark disparagement, even if regular trademark law doesn't apply, e.g., because my creation was non-commercial.

Then, there's also the very new theory of trademark "dilution": Ordinarily, proving trademark infringment requires showing likelihood of confusion. However, new legislation in 1995[1] permitted owners of particularly distinctive and famous marks (Coca-Cola, Kodak, Reebok, Xerox) to wield trademark law with a legal presumption that any third-party use is confusing, and therefore can be enjoined.

[1] Federal Trademark Dilution Act, 15 USC 1125(c). Many states also have anti-dilution statutes. Also relevant, where Internet domain names are at issue, is the Anti-Cybersquatting Protection Act, 15 USC 1125(d), enacted 29 November 1999 as Section 43(d) of the Lanham Act. See discussion.