[steering-discuss] Trademark Policy of the Document Foundation

Hello everyone,

Please find the more or less final draft of the trademark policy of the
Document Foundation: http://wiki.documentfoundation.org/TradeMark_Policy

I would like to thank Italo for his outstanding effort in putting
together the various input of the SC members and collecting the
different types of trademark policies of major FOSS projects.

As it turns out you will find this policy to be quite standard.
However, we are looking for a legal review of this document. We shall
bring it to several lawyers. Yet as I know we do have lawyers around
here, please feel free to comment.

Best regards and happy new year to everyone,

Hi there,

Please find the more or less final draft of the trademark policy of the
Document Foundation: http://wiki.documentfoundation.org/TradeMark_Policy

  We've done some analysis internally on it, and the good news is that
the text looks fairly good.

  There is some concern about the lack of clarity on whether
  incorporating libreoffice (or other marks) into a domain name
  is allowed - this is an area people often want to tread on, and
  we should probably directly address it.

  Similarly - it does not mention including 'libreoffice' into a
  business name - I think we should simply prohibit that.

  So I suggest we add a clarification of both of these to the end of the
"Non permitted use section".

  "Thus uses of the Marks in a domain name, or business name
   without explicit written permission from TDF are prohibited."

  Another point is around the licensing of the policy itself; I suggest
we place it under some sort of open license - e.g., creative commons
attribution share-alike, or something like that, so other projects can
freely re-use it. That is relatively easy to do, but I'd like to get
Karen's feedback first.

  Finally - I just realised that I'd like the "substantially unmodified"
clause to include a few more bundling bits: so

  "Substantially unmodified" means built from the source code
   provided by TDF, possibly with minor modifications including
   but not limited to: the enabling or disabling of certain
   features by default, translations into other languages, changes
   required for compatibility with a particular operating system
- distribution, or the inclusion of bug-fix patches)."
+ distribution, the inclusion of bug-fix patches, or the bundling
+ of additional fonts, templates, artwork and extensions)

  Since that seems like it is something people would want to call
LibreOffice and just extends the "package other translations" scope to
other common things.

  So - do people have problems with any of that ?

  HTH,

    Michael.

Hi,

Hi there,

> Please find the more or less final draft of the trademark policy of
> the Document Foundation:
> http://wiki.documentfoundation.org/TradeMark_Policy

  We've done some analysis internally on it, and the good news
is that the text looks fairly good.

  There is some concern about the lack of clarity on whether
  incorporating libreoffice (or other marks) into a domain name
  is allowed - this is an area people often want to tread on,
and we should probably directly address it.

  Similarly - it does not mention including 'libreoffice' into a
  business name - I think we should simply prohibit that.

  So I suggest we add a clarification of both of these to the
end of the "Non permitted use section".

  "Thus uses of the Marks in a domain name, or business name
   without explicit written permission from TDF are prohibited."

That does sound sensible. We should also think about having maybe
differentiated logos...

  Another point is around the licensing of the policy itself; I
suggest we place it under some sort of open license - e.g., creative
commons attribution share-alike, or something like that, so other
projects can freely re-use it. That is relatively easy to do, but I'd
like to get Karen's feedback first.

That's trivial indeed.

  Finally - I just realised that I'd like the "substantially
unmodified" clause to include a few more bundling bits: so

  "Substantially unmodified" means built from the source code
   provided by TDF, possibly with minor modifications including
   but not limited to: the enabling or disabling of certain
   features by default, translations into other languages,
changes required for compatibility with a particular operating system
- distribution, or the inclusion of bug-fix patches)."
+ distribution, the inclusion of bug-fix patches, or the
bundling
+ of additional fonts, templates, artwork and extensions)

  Since that seems like it is something people would want to
call LibreOffice and just extends the "package other translations"
scope to other common things.

  So - do people have problems with any of that ?

Not from my side. Here's the feedback I gathered elsewhere (from other
lawyers):
-the substantially unmodified clause was found vague so what you just
proposed above might help.
- there was the question of the clause requesting that any distributor
  mentions one can get LibreOffice for free (on our website) and
  provide a link to it. The question was about whether we should
  request distributors to put that more proeminently. I have to say I
  didn't really understand that comment; but the answer was that
  Mozilla does not even allow to make a profit from the distribution of
  the software on a physical medium (you can charge a fee covering
  costs, but not make a profit on it apparently). I think we want to
  leave our clause the way it is, it sounds reasonnable.

Best,
Charles.

Hi all,

Hi,

Hi there,

Please find the more or less final draft of the trademark policy of
the Document Foundation:
http://wiki.documentfoundation.org/TradeMark_Policy

  We've done some analysis internally on it, and the good news
is that the text looks fairly good.

  There is some concern about the lack of clarity on whether
  incorporating libreoffice (or other marks) into a domain name
  is allowed - this is an area people often want to tread on,
and we should probably directly address it.

  Similarly - it does not mention including 'libreoffice' into a
  business name - I think we should simply prohibit that.

  So I suggest we add a clarification of both of these to the
end of the "Non permitted use section".

  "Thus uses of the Marks in a domain name, or business name
   without explicit written permission from TDF are prohibited."

That does sound sensible. We should also think about having maybe
differentiated logos...

I'm not sure. Look the Debian logos, very few people know the existence of the two different logos and their usage.
It's already very difficult and time consuming to track the name and logo usages, I'm afraid that having different logos will bring more requests, more wrong usages and more difficulties to manage the whole thing.

  Another point is around the licensing of the policy itself; I
suggest we place it under some sort of open license - e.g., creative
commons attribution share-alike, or something like that, so other
projects can freely re-use it. That is relatively easy to do, but I'd
like to get Karen's feedback first.

That's trivial indeed.

Yes, Bernhard proposal also if I remember well.

  Finally - I just realised that I'd like the "substantially
unmodified" clause to include a few more bundling bits: so

  "Substantially unmodified" means built from the source code
   provided by TDF, possibly with minor modifications including
   but not limited to: the enabling or disabling of certain
   features by default, translations into other languages,
changes required for compatibility with a particular operating system
- distribution, or the inclusion of bug-fix patches)."
+ distribution, the inclusion of bug-fix patches, or the
bundling
+ of additional fonts, templates, artwork and extensions)

  Since that seems like it is something people would want to
call LibreOffice and just extends the "package other translations"
scope to other common things.

  So - do people have problems with any of that ?

Not from my side. Here's the feedback I gathered elsewhere (from other
lawyers):
-the substantially unmodified clause was found vague so what you just
proposed above might help.
- there was the question of the clause requesting that any distributor
   mentions one can get LibreOffice for free (on our website) and
   provide a link to it. The question was about whether we should
   request distributors to put that more proeminently. I have to say I
   didn't really understand that comment; but the answer was that
   Mozilla does not even allow to make a profit from the distribution of
   the software on a physical medium (you can charge a fee covering
   costs, but not make a profit on it apparently). I think we want to
   leave our clause the way it is, it sounds reasonnable.

+1 to let our clause the way it is.

So a global +1 from my side.

Kind regards
Sophie

Michael Meeks schrieb:

Hi there,

  There is some concern about the lack of clarity on whether
  incorporating libreoffice (or other marks) into a domain name
  is allowed - this is an area people often want to tread on, and
  we should probably directly address it.

  So I suggest we add a clarification of both of these to the end of the
"Non permitted use section".

  "Thus uses of the Marks in a domain name, or business name
   without explicit written permission from TDF are prohibited."

  So - do people have problems with any of that ?

So what about all the sites built in best intentions to support
LibreOffice and that are not under the control of TDF.

I would prefer to say that TDF can demand not to use the name, when it
is misused(right word?).

In the other way TDF gives his placet once and if the domain does
forbidden things, they can state they have a permission so there should
be a revokation too.

I don't know if I could make me clear.

Regards
Karl-Heinz

Proposed changes look uncontentious to me.

C.

Hi Michael,

  So I suggest we add a clarification of both of these to the end of the
"Non permitted use section".

  "Thus uses of the Marks in a domain name, or business name
   without explicit written permission from TDF are prohibited."

just to get this right: "business name" means name of a product, service, company, organization
or similar. E.g. "LibreOffice Premium Support" would not be allowed.
But it is allowed to use the trademarks, describing your business service as "We are XYZ Ltd.,
providing Support for LibreOffice "

  So - do people have problems with any of that ?

No .. means +1 to the modifications.

regards,

André

I thought a little info might be helpful.
I don't dare mention the product name... but another open source
product has the following clause in their trademark policy which
allows unwritten licencing of the trademark:

-----
//Use that does not require a written license//
Non-commercial Products that exist solely to support Drupal and its
adoption, use and users may use the Drupal trademark in promotional
materials, such as posters, books, pins, and t-shirts.

Use of the trademark that is merely descriptive of the Product is
acceptable without need of a license. If such description clearly
separates your trademark from the Drupal trademark (e.g. by describing
the Product as "YourProduct for Drupal"). In other words, you would
not need a license to promote the name "TotalTraining for Drupal" but
branding your product so it seems like it comes from Drupal (e.g.
"Drupal TotalTraining") would not be permissible.
-----

This policy has allowed the community to build a huge 3rd party
community support network around their product while protecting their
trademark successfully.

Maybe something to consider.
Michael Wheatland

Hi Michael,

Michael Wheatland wrote (21-01-11 23:33)

I thought a little info might be helpful.
I don't dare mention the product name... but another open source

:wink:

product has the following clause in their trademark policy which
allows unwritten licencing of the trademark:

-----
//Use that does not require a written license//
Non-commercial Products that exist solely to support Drupal and its
adoption, use and users may use the Drupal trademark in promotional
materials, such as posters, books, pins, and t-shirts.

Use of the trademark that is merely descriptive of the Product is
acceptable without need of a license. If such description clearly
separates your trademark from the Drupal trademark (e.g. by describing
the Product as "YourProduct for Drupal"). In other words, you would
not need a license to promote the name "TotalTraining for Drupal" but
branding your product so it seems like it comes from Drupal (e.g.
"Drupal TotalTraining") would not be permissible.
-----

This policy has allowed the community to build a huge 3rd party
community support network around their product while protecting their
trademark successfully.

Interesting, thanks for posting,
But as far as I read the current version on the wiki, it allows the same use etc. Or did I miss something?
(http://wiki.documentfoundation.org/TradeMark_Policy)

Regards,
Cor

As far as I can see, one aspect that is not covered by the proposed
trademark policy is the use of our product trademark "LibreOffice"
directly in the name or URL of other service providers.
ie can a commercial support provide be called "LibreOffice Support"
located at libreofficesupport.com?

Also there is no distinction between commercial activities and
community (not for profit) activities in the 'permitted use' section,
which would result in groups, including NL groups being subjected to
the same rules as commercial providers.

Then again, I may have read it incorrectly.

Mike

Hello Michael,

> Hi Michael,
>
> Michael Wheatland wrote (21-01-11 23:33)
>
>> I thought a little info might be helpful.
>> I don't dare mention the product name... but another open source
>
> :wink:
>
>> product has the following clause in their trademark policy which
>> allows unwritten licencing of the trademark:
>>
>> -----
>> //Use that does not require a written license//
>> Non-commercial Products that exist solely to support Drupal and its
>> adoption, use and users may use the Drupal trademark in promotional
>> materials, such as posters, books, pins, and t-shirts.
>>
>> Use of the trademark that is merely descriptive of the Product is
>> acceptable without need of a license. If such description clearly
>> separates your trademark from the Drupal trademark (e.g. by
>> describing the Product as "YourProduct for Drupal"). In other
>> words, you would not need a license to promote the name
>> "TotalTraining for Drupal" but branding your product so it seems
>> like it comes from Drupal (e.g. "Drupal TotalTraining") would not
>> be permissible. -----
>>
>> This policy has allowed the community to build a huge 3rd party
>> community support network around their product while protecting
>> their trademark successfully.

I think it should be stated that one of the goals (perhaps this is
unspoken or unclear at this stage) is to do very much the same. One of
the main weaknesses of OpenOffice.org was its inability to generate
business for the others (and even revenue for itself).

My initial comment would be that the Trademark policy works very much
in the same direction (actually the Drupal TM were studied among others
before it was drafted) but is somewhat more restrictive on the name.
Read below for more details.

>
> Interesting, thanks for posting,
> But as far as I read the current version on the wiki, it allows the
> same use etc. Or did I miss something?
> (http://wiki.documentfoundation.org/TradeMark_Policy)
>
> Regards,
> Cor

As far as I can see, one aspect that is not covered by the proposed
trademark policy is the use of our product trademark "LibreOffice"
directly in the name or URL of other service providers.
ie can a commercial support provide be called "LibreOffice Support"
located at libreofficesupport.com?

I understand the policy would not allow that sort of use.

Also there is no distinction between commercial activities and
community (not for profit) activities in the 'permitted use' section,
which would result in groups, including NL groups being subjected to
the same rules as commercial providers.

Then again, I may have read it incorrectly.

I think there is a distinction, actually, to the extent that the guiding
principle (aside the business case limitation) is that you can use the
LibreOffice name factually. So I would say that if you come up with,
say, a forum community that has the "Support forum for LibreOffice" it
is perfectly legit. The reason being, you're a forum factually
providing support and help on LibreOffice.

One other interesting point to mention that was touched on yesterday
was the policy not for LibreOffice itself but for the Document
Foundation. We're working on a logo without the foundation mention on
it as we would like to have a more restrictive appproach on this one.

Best,
Charles.

Hi all,

A lightning speed reading of the guidelines brought the following
thought to my mind :

"If you are selling services for TDF software (for example, support),
you may not tie the download of the product with the purchase of the
service. The download of TDF product using TDF Trademark may not be
connected in any way to the purchase of a service.

You must provide a statement that (i) TDF software is available for free
and link directly to our site; (ii) the purchase of your service is
separate from the download of TDF software; and (iii) your service is
not affiliated with TDF. "

This does not cover the case where, as at present with OOo, you have
scurrilous people offering downloads (for Windows installers) which,
although not requiring the user to sign up for a paid contract (and yes,
I know that these exist too), do require the user to pay for an
activation code.

This can be argued as not providing a service, but rather as a product
sale, depending on how strictly the term "service" is interpreted in a
given jurisdiction. It might be wise to enlarge the coverage of the
above to include forbidding tying activation codes to downloads where
the mark(s) are represented.

I will go over the guidelines again and post again here once I have had
a deeper think about it all.

Alex

Hi all,

  There is some concern about the lack of clarity on whether
  incorporating libreoffice (or other marks) into a domain name
  is allowed - this is an area people often want to tread on, and
  we should probably directly address it.

  Similarly - it does not mention including 'libreoffice' into a
  business name - I think we should simply prohibit that.

  So I suggest we add a clarification of both of these to the end of the
"Non permitted use section".

  "Thus uses of the Marks in a domain name, or business name
   without explicit written permission from TDF are prohibited."

Whilst I believe that this is a good idea, from a practical application
of trademark law standpoint, it is not necessarily a valid condition,
because not all jurisdictions give deference to trademarks over domain
names. Just something to be aware of. So say I decide to file a FQDN
called f**klibreoffficeubstrds in some obscure territory's jurisdiction,
and which most would consider to be disparaging at the least and
offensive at the worst, then you might find you'll have a hard time
being able to do anything about it.

  Finally - I just realised that I'd like the "substantially unmodified"
clause to include a few more bundling bits: so

  "Substantially unmodified" means built from the source code
   provided by TDF, possibly with minor modifications including
   but not limited to: the enabling or disabling of certain
   features by default, translations into other languages, changes
   required for compatibility with a particular operating system
- distribution, or the inclusion of bug-fix patches)."
+ distribution, the inclusion of bug-fix patches, or the bundling
+ of additional fonts, templates, artwork and extensions)

Seems fair enough to me. The current clause is a bit waffly and this
adds clarity.

Alex

Hi again,

"- Accompanying Symbol: The first or most prominent mention of a TDF
Trademark should be accompanied by a symbol indicating whether the mark
is a registered trademark ("®") or an unregistered trademark ("™"). "

How is anyone to know which marks are registered or unregistered ? I
assume that this will be made apparent somewhere on the TDF or
LibreOffice website ?

Alex

Hi Karl,

So what about all the sites built in best intentions to support
LibreOffice and that are not under the control of TDF.

  I suppose they need permission :slight_smile:

In the other way TDF gives his placet once and if the domain does
forbidden things, they can state they have a permission so there should
be a revokation too.

  Sure - so any permission given should not be permanant, but contingent
on good behaviour, and perhaps renewable, if we are concerned about
mis-use.

  HTH,

    Michael.

Hi Andre,

> "Thus uses of the Marks in a domain name, or business name
> without explicit written permission from TDF are prohibited."

just to get this right: "business name" means name of a product,
service, company, organization

  Good point; 'business' is confusing, I switched it to company name to
make it more comprehensible:

  "Thus uses of the Marks in a domain name or company name without
  explicit written permission from TDF are prohibited."

  Wrt. product name - hopefully everyone distributing it calls the
product LibreOffice - this is our plan at least, so forbidding that
would not be ideal (cf. permitted use).

  Thanks,

    Michael.

I might add that "non-commercial" use of a trademark is also, in some
jurisdictions, not considered to be an activity that infringes a
trademark holder's rights. One of the basic rules is whether there is a
risk of confusion in the buying public's mind / eye between the alleged
infringing use and the legitimate use by the trademark right holder.
Since purely not for profit sites are not commercially driven, there is
an argument, upheld in some jurisdictions, that excludes trademark
infringement for that kind of use, irrespective of how close it appears
to get to the right holder's activities (as long as it remains
non-commercial).

Alex

Hi Michael,

  I suppose they need permission :slight_smile:

With the caveat of the "fair use" exception, which does not require
permission. The notion of "fair use" varies from country to country. In
some countries, you are even allowed to use registered trademarks in
parodied form, without impugning the TM holder' rights.

Alex

Hi,

  Good point; 'business' is confusing, I switched it to company name to
make it more comprehensible:

  "Thus uses of the Marks in a domain name or company name without
  explicit written permission from TDF are prohibited."

This will be virtually unenforcible. For it to be enforcible, you would
have to prove, at a minimun, that :

1) TDF has a trademark right in the country in question. AFAIK, TDF is
still very, very far from worldwide trademark coverage.

2) The use of a word or sign containing LibreOffice prevents the
registration of a company name or a domain name in the territory where
the issue is raised. Of course, one can always go to UDRP for domain
names, which is cheaper than a court case on the whole, but it still
costs money and you have to show a demonstration of recognisable harm or
intent to confuse. In "honest Joe" good faith domain name registrations
such as those declared by amateur groups, or volunteers, or just
associations, that will be a particularly hard act to follow.

3) in each case, the trademark is valid.

The validity question in point 3 is an important one. The use of
"office" as part of a trademark to designate the actual or future goods
and products/services is not at all original with regard to productivity
software, and this part of the trademark is almost certainly devoid of
any protection. In the US, if the trademark LibreOffice has been filed,
the trademark office may require specific disclaiming of the "office"
part of the mark.

A quick search of the USPTO database in international class 9 (covering
computer programs and software) gives at least the following results :

- LIBREACCESS
- LIBREPUBLISH
- LIBREMARKET
- LIBRE DESIGN ("Design" is specifically disclaimed)
- LIBRESTREAM
- LIBREDIGITAL

I won't even bother to go near the "OFFICE" ones, well maybe this one,
because it is kind of ironic :

- FREEOFFICE (owned by Softmaker Software GmbH, who happen to
commercialize, in Europe at least, an office suite by the name of
Softmaker Office) - that should be interesting when either the Examiners
or the attorneys wake up.

Alex

Hi :slight_smile:

Even tho it is unenforceable i think it is good for us to state our wishes
clearly like this to avoid situations where people set something up trying to be
helpful but accidentally cause us problems.

If/when it becomes enforceable then it would be best practice for us to attempt
to solve infractions by diplomacy first and diplomacy is still a valid option
for us even this early. We do have some excellent people who have the
appropriate skills to handle this.

Also we can't have everything ready all at once. Getting this part of the
puzzle completed gives a solidity and gravitas to other parts of the puzzle as
they fall into place.

Congrats and regards from
Tom :slight_smile: