On Fri, 14 Jan 2005 22:59:17 +0000, Gervase Markham <[EMAIL PROTECTED]> wrote: > Michael K. Edwards wrote: > > Change "the name of the package will have to be changed" to "the > > Mozilla Foundation reserves the right to withdraw license to its > > trademarks" and I think it's completely unobjectionable. > > Without commenting on whether this change would be OK or not, can you > see any circumstances where the two may not be the same thing?
As I think I've said before, my reading of US precedent (IANAL) is that (federal) statutory protection of trademarks doesn't extend to re-packaging as long as the labeling of the result meets the Coty standard. So I do think there's a difference between a contractual commitment to change names and an acknowledgment that the trademark holder may yank trademark license if the declared QA standards aren't met. How this labeling requirement maps into software space, what the limits of "re-packaging" are, and what recourse may be available under some state's or country's more restrictive law, are questions for a real lawyer. > Part of the goodwill surrounding this, it seems to me, is that if the > Foundation were ever to withdraw the trademark license, Debian would > respect both the letter and the spirit of that, rather than turn around > and say "well actually, legally we can keep using them because of law > X". (This passes no judgement on the existence or validity of law X, > whatever it might be.) I would hope that, if guidelines were in place, it would never come to that. What the Mozilla Foundation believes they need is a demonstration that they are exercising the QA authority appropriate in a trademark license. I'm sympathetic to this concern, and so I'm coming around to the notion that a set of ground rules may be worth having, to at least create some mutual safe space. But I don't really think it benefits either side to create a cause for enforcement beyond trademark statute, and trying to get a binding commitment from the Debian side needlessly complicates the discussion. What the "names must be changed" would do for you in a legal sense is create an action for breach of contract. The downside of this for the Foundation is that you would probably have to pursue a breach of contract claim first before you could get the trademark infringement claim into court -- compare Effects v. Cohen. The legal standards for breach of contract and the tort of trademark infringement are very different, and the legal nature of Debian makes it much harder to reach its actions with breach of contract than with a tort claim. For one thing, even if, say, SPI accepted the change-of-name clause, you'd have to demonstrate the acceptance of contract conditions on the part of the entity doing the distributing. This could be ugly if, say, a new maintainer takes over the mozilla-firefox package and the ftpmasters decide to move the package to non-us (outside of SPI's reach). In this factual setting, I think it's wisest for everyone to fall back to trademark statute if the agreement falls apart. Under tort law, if trademark infringement were factually demonstrated, you could probably get a preliminary injunction against SPI (as US asset holder), the current maintainer, the ftpmasters, and ten Does and Roes. If the Mozilla Foundation is willing to offer substantially the terms you outlined, and if people more experienced than I in DFSG interpretation find them unobjectionable, I think they would form a good process guideline on the Debian side and shield the Mozilla Foundation from a real violator's argument that they're allowing their trademark to lapse in the Debian channel. Neither of these goals requires that the guideline be a bilateral contract, so I don't think we need to worry that Debian isn't promising in advance to cease use of the trademarks in the unlikely event, etc. Cheers, - Michael
