Recent Events, and Trademark Actions by SSC, Inc.

By Rick Moen

Casting our minds back to early on October 28, 2003: The entire Linux Gazette staff (unanimously) decided to take the magazine to new hosting for the first time since time-strapped founder John M. Fisk gratefully turned over guardianship of the publication to SSC, Inc. and publisher Phil Hughes in 1996.

There were a number of reasons for this; one of the two biggest was SSC's covert deletion of material (including entire articles) from back issues, and, repeatedly, totally ignoring our questions about those removals, after we found out. We tried one last time on October 26: After 48 hours of no SSC reply to those inquiries, we decided upon departure.

So, early that Tuesday the 28th, we wrote a very polite letter to Hughes, thanking him for seven years of assistance and asking his assistance in our transition. We also asked him to fix SSC's (assumed inadvertant) violation of past authors' copyrights in its recent republications of old articles. As of December, those violations are still ongoing, e.g., replacement of the authors' copyright notices with SSC corporate copyright notices (falsely claiming them to be SSC property) on these two articles:

http://www.linuxgazette.com/node/view/58
http://www.linuxgazette.com/node/view/61

Our October 28 letter notifying Mr. Hughes of the staff's departure can be read here, and is recommended:

http://lwn.net/Articles/57161/

The above was approximately the state of affairs when we went to press for the November (#96) issue, as reflected in that issue's Brief History of Linux Gazette article. This article aims to update LG readers on developments since then.

The first and most crucial involves the other chief reason Linux Gazette left its longtime home at SSC: Mr. Hughes and his webmaster had been consistently giving us staffers the very clear message that they intended to change LG to have only dynamic Web content, with no more monthly issues and no editors. In effect, there would be no magazine, and the http://www.linuxgazette.com/ site was slated to become another Slashdot-style news/discussion site.

In essence, this would have meant the end of Linux Gazette in all meaningful senses. LG was already starting to erode since the summer, because several authors had stopped contributing articles in protest over the editor's elimination, and the quality of the remaining articles was going significantly downhill. The staff's options were thus to either let this continue to happen, or to move the magazine.

Many have commented that they felt SSC has a moral right to run the Gazette, because of founding editor John Fisk's 1996 hand-off to Mr. Hughes and his company. However, on October 28, the question we faced was not whether SSC had the right to run it, but rather whether it had the right to kill it, over the staff's objections.

The foregoing is an important point to realise, because the situation was then changed on us a second time, immediately after the November issue went to press: After we announced on October 28 that the magazine would be continuing elsewhere, SSC apparently reversed policy and decided to resume publishing magazine issues — using uncredited paid SSC employees to assemble material. We knew nothing of this until we noticed the unheralded, surprise appearance of a second Linux Gazette magazine (at linuxgazette.com).

Accordingly, although the staff regret the confusion resulting from this situation, it was not our idea, and it resulted from a sudden SSC policy change outside our knowledge or control. We're doing everything we can to alleviate the confusion. We also note that even though SSC has reinstated monthly editions, they have not said one word about reinstating an editor.

We are likewise doing everything we can to avoid conflict with SSC in this matter, and to discourage intemperate actions and commentary. Unfortunately, this attitude has not been reciprocated:

1. The very same day it received our notice of the magazine's departure, SSC, Inc. suddenly filed a US $300 fee and trademark application #78319880 with the USA Patent and Trademark Office (USPTO), requesting registration of the name "Linux Gazette" as a service mark (explained below). On that form, SSC certified that it had used the mark in commerce starting August 1, 1996.

2. SSC retroactively started adding the symbol "TM" to its instances of our magazine name on its site. "TM" is an unregulated symbol used to assert existence of a commercial brand identity for goods offered for sale. The same concept applied to commercial services is technically called a service mark, and can be publicly asserted with an "SM" symbol (not "TM").

3. On December 3, 2003, we received a letter from Phil Hughes at SSC, Cc'd to our DNS domain registrar, claiming "Linux Gazette" is an SSC trademark and that our possession and use of the linuxgazette.net domain violates SSC's commercial rights. SSC's main intent appears to be seizure of our domain name via invocation of ICANN's Uniform Domain-Name Dispute-Resolution Policy (UDRP), without any need to prove their entitlement in court.

Our attempt to assess and respond to this attack on our Internet presence — sprung on us right at our publication deadline — is part of the reason for this issue being delayed, for which we apologise. (The other reason was our desire to change the logo and layout, and this required updating several templates and scripts.)

Here is is a brief explanation of the relevant portion of trademark law. (I'm not an attorney, so people needing to make business decisions should consult appropriate legal experts, rather than my analysis.)

Trademark law, in essence, recognises your stake in any commercial "brand" you establish in the market. Contrary to popular misconception, you as a trademark owner cannot prevent others from using your brand identity in the general sense — but you are entitled to stop others from offering competing commerical goods or services (within the same trade or industry) using your brand to mislead your customers into thinking you produced or endorsed them.

For example, in hanging out my shingle as "Viking Network Consulting[SM]", I'd be establishing a brand identity within my profession: In legal terms, my firm's name would be recognised as a service mark. I would thus be entitled to bring civil suit to suppress sales of "Viking Firewall Installation" services by competitors, on grounds of likelihood of my customers thinking I'd produced or endorsed those.

Notice that the reach of a trade or service mark, if valid and legitimately owned by you, extends solely to (1) uses by others in commerce, (2) within your trade or industry, and (3) in the same geographical area. I would not be able to enjoin a different Viking Network Consulting from operating in Trondheim, nor Viking Senior Computer Volunteers from giving non-profit help to retirees.

Broader geographical coverage applies if you pay US $300 every ten years to USPTO, certifying you used the mark in commerce, within your field of business, before any other applicants. This is what SSC claimed, in its application to USPTO. If granted by trademark examiners, such registration entitles the owner to put "®" (a legally regulated symbol) next to the mark, rather than just the toothless "TM" or "SM" insignia.

This gets us neatly back to the question of who "owns" Linux Gazette. It's a fair question. The copyright question is clear: All material remains the property of each individual contributor and is issued under an open-source licence (OPL 1.0) — an arrangement LG instituted early on because LG was always an explicitly free magazine. To quote founding editor John Fisk in issue #8 (Aug. 1996), who wished to explain his vouchsafing of LG (a free magazine) to SSC, a commercial company:

So, after chatting at some length with Phil Hughes about this, I've decided to turn the Linux Gazette over to the Linux Journal. I think that the Gazette has demonstrated the "proof of concept" — that a freely available and open-to-all online publication is a great means for sharing information and ideas. There are a number of great things that could be done with this and I'm excited about the Gazette continuing on in this tradition.
Also, please know that the Linux Gazette has been, is, and will continue to be an absolutely free publication. I can't stress this enough: I know that many folks feel passionately about keeping Linux from any commercialization whatsoever. I happen to disagree with this as it's my feeling that a free and a commercial side can peacefully coexist and actually encourage and support each other. That said, I've really enjoyed knowing that the Gazette has been freely available to all and that it will continue to be so.

We agree that SSC had a well-established moral claim to LG leadership from John M. Fisk, and maintained that custodianship well for seven years. Our view changed during the year 2003, with SSC's announced plans to (in effect) kill the magazine as such, and with its refusal to account for its surreptitious deletions from the linuxgazette.com back-issues archives and their mirrors.

Consider, for comparison's sake, a hypothetical situation in which Linus Torvalds announces his intent to shut down the Linux kernel project. The situation is closely parallel: You have a collective effort headed by one party, but in which copyright is retained by each individual contributor, and material is issued under an open-source licence. We'd be sorry to see Linus go, but I doubt we'd dally more than about a minute before forking the kernel and moving it elsewhere. If he later changed his mind and resumed work on his fork, things would be awkward (just as they are now with two Linux Gazettes), but we would not say ours had suddenly became an imposter kernel.

Moving on from moral claims, there are legal ones:

SSC's recent legal claim to hegemony over the name "Linux Gazette" strikes us as outrageously unmerited, and cheeky: (1) We see no indication that Fisk assigned SSC commercial rights over Linux Gazette. If anything, Fisk made the opposite intention crystal-clear. (2) Separately and in addition, SSC's claim to have used the name in commerce starting August 1996 seems, to our knowledge, materially false. We can find no offering of commercial services under that name by SSC or anyone else. And last (also separately and in addition), (3) the attempt to use commercial trademark law as a ploy to strong-arm us — a 100% non-commercial, volunteer-staffed community project — is monumentally outrageous: It's inherent in the nature of trademark law that non-commercial uses simply cannot infringe trademark. Period.

A study of the Gazette's eight years of history suggests there's no way in Hades it can be reasonably claimed to have been ever a service offered in commerce, not in 1996 and not today. As we hope to point out in our draft response to SSC's attempted ICANN UDRP domain-snatching, SSC's acceptance of financial underwriting for LG from other Linux firms (cited by Hughes as justifying his alleged trademark) doesn't make it a service offering in commerce; it makes it a charity. We think that can be shown to anyone's satisfaction, including a judge.

We'd like to stress that we still have no intention to undermine or attack SSC. In fact, we worked out on November 5 one of numerous ways the two Gazette initiatives could work in harmony. (This is transcribed from an IRC discussion:)

Frank: anyone feeling sorry for Phil yet, btw? *G*
JimD: Frank, actually yes.  I have been for several days.
Frank: yes, me too...
       I feel sad that he feels to need to be like this... 
       but I do not feel sorry enough not to call him on this situation...
JimD: I won't let my sympathy for him deter me, either.
Rick: jimd:  Second your comments, and it reminds me of a related point:
      When you've embarrassed someone, it's advantageous if you can offer
      him a way out, rather than putting his back up against the wall.
      I've been guilty of doing the latter, in disputes with people.
JimD: I can't see a good way for us to offer Phil *another* way out of all
      this.  We've offered several.
Rick: It's a point.
      I had a half-baked notion, which I'm trying to recall right now.
      Supposing LG.com operated its CMS, and generated content on there. 
      They can do Web-things with it as desired.  The Web contributions
      then are one of the diverse sources of candidate material for the LG
      newsletter (per OPL) that is published monthly by the LG.net editors,
      canonical location LG.net, but then mirrored to lots of other places
      including LG.com.
      If Phil objected to particular content in any issue, he would have
      the option of not mirroring that entire issue.
      Other mirrors of course also inherently have that right.
      Advantages:  Saves face, doesn't require any domain transfers.  Phil
      gets Web toys, we get a monthly magazine, of which there then is 
      only one.
      Nobody has to rename.  Nobody gets censored.
      Also, the editors get editorial control over the magazine, SSC gets
      editorial control over the Web stuff (other than the magazine).
      SSC remains free to disclaim its links to the magazine mirror with
      "SSC, Inc. does not necessarily endorse blah blah."
      SSC can continue to claim that it's asserting trademark over the name,
      but not try to register it.  The editors can disregard the trademark
      claim in knowledge that successful assertion of trademark allows you
      ONLY to bar competing use of the mark in commerce that falsely
      tends to convince customers that those competing goods are endorsed 
      or produced by the trademark owner.
      (See:  Lanham Act, US Code — easily googleable).
JimD: I don't think Phil is in the frame of mind to take such an option
Rick: A point, too.  Maybe in time.
JimD: Yep.

At present, indeed, SSC appears in absolutely no mood to work with us, but only to work on us, e.g., by launching surprise attacks on our Internet presence. However, the door remains open on our end, and we continue to regard SSC as our natural friends and allies in the long term. We hope they'll eventually remember, despite injury to their pride (but nowhere to their commercial interests), that they caused an entire Linux-community institution to walk out en masse.

Readers should rest assured that we are acting to prevent seizure of our Internet domain, and will take other measures as required to protect our name. We are Linux Gazette and will continue to do our best at being that. Our readers deserve no less.

Recent Events, and Trademark Actions by SSC, Inc.

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