Bug#607839: Question about GNOME Trademark and GNOME project packages in Debian

[Thorsten Glaser]

Steve Langasek dixit:

>DFSG #8 is not an issue.  DFSG #4 allows authors to require changed versions
>of their software to be distributed under a different name.  If the upstream
>makes special allowances for Debian to use the name for modified versions,
>this doesn't fail the DFSG, because everyone still has the required rights
>when using the package.

I don’t think that is true. The DFSG are sort of a promise to the users
of Debian that they can assume certain freedoms are met when dealing
with the main archive. So, if upstream allows Debian to use the original
name for modified works, but that permission is not transitive to Debian
users (redistributors, etc) it fails DFSG #8 because, sure, the users or
redistributors _could_ rename it, but that’s not what the promise is
about. In this case, it could only be met if the packages in main were
already renamed (and Debian would not make use of the special permit).

Food for thought: NMUs… Derivatives… or even simply CD distributors,
such as the people running the Debian booths at events.

bye,
//mirabilos (who’d prefer to just shut up and hack, but in this world…)

PS: Please do Cc me in replies that I should read, as I’m not on this
list.
-- 
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when God enlightens him. Or only God invents algorithms, we merely copy them.
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Bug#607839: Question about GNOME Trademark and GNOME project packages in Debian

[Shaun McCance]

On Fri, 2011-07-15 at 11:07 -0400, Mike O'Connor wrote:
> When we are contacted by a owner of a trademark on which we believe we
> are infringing, the safest thing for us to do legally is to cease all
> use of the mark.  The easiest thing for us to do is to ignore their
> claim.  We'll need to figure out where we want to land between these two
> extremes, and here again, there is tension.  I don't believe it is as
> simple as you state it: "...that seems like something that will have to
> stop if the GNOME foot is not free software because of some restrictive
> TM license".  Because by that argument tells us that we have to rename
> all GNOME software, since the trademark license is restrictive about how
> we use "GNOME".

Sorry for the confusion. Nobody is actually asking you to rename 
packages. We realize our  trademark usage guidelines need work. Talking
about renaming packages is not productive, because nobody from GNOME
actually wants you to do that.

We are working to improve our trademark policy and in the meantime, we
want you to know that GNOME has no complaint about omitting notices in
package names or other similar customary informal use, such as in  
emails, and we will not assert our current policy in that way, so long
as there's no confusion about whether the software is actually GNOME.

Thanks,
Shaun McCance
GNOME Foundation Board Member





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Bug#607839: Question about GNOME Trademark and GNOME project packages in Debian

[Steve Langasek]

On Thu, Jul 14, 2011 at 11:26:02PM +0200, Joerg Jaspert wrote:
> We feel that it is infeasible for Debian to be in complete compliance
> with the current GNOME trademark license.  In our strict reading of this
> license, the only way to be in full compliance would require us to
> perform actions such as renaming packages in the form of
> GNOME™-control-center.  This extreme example would conflict directly
> with Debian policy on the use of non-ascii lowercase characters in
> package names as well as being technically inadvisable.  Therefore, as
> long as we are using GNOME marks, we are likely to be in some way
> violating their current trademark license agreement.

The problem here is not that Debian does not comply with the trademark
license.  The problem here is that someone made the mistake of *ASKING*
about the trademark license.

Debian is not *trading* on any of the marks in question, and there is no
reason under the sun for us to give a damn about the status of any trademark
claims until a trademark holder specifically makes it a legal question by
sending a cease and desist letter or filing a lawsuit.

It doesn't matter one bit whether we're complying with the terms of the
trademark license agreement *if we aren't doing anything that requires
licensing of a trademark*.

Now, trademarks are sensitive things for upstreams; they wouldn't have gone
to the trouble of securing a mark if they didn't care about protecting it
from dilution.  We (broadly) feel the same way about the Debian mark.  So
since we're really on the same side as the upstreams and want to get along
with them, it makes sense for us to take into consideration requests they
might have of us.  But this is not a question of freeness or legality, only
of maintaining good relations with upstream.

> The safest thing for us to do would seem to be to terminate all use of the
> GNOME marks, and essentially rebranding the software, as was done in the
> case for firefox/iceweasel.

This is a perverse definition of "safe".  There is no real risk associated
with nominative and functional use of the marks (such as in package names,
directory names, and the like).

> We therefore think that the best way forward would be to make a best
> effort to correct any specific cases which they point out to us as
> problematic misuse of their marks.  But we have to be careful not to end
> up with a Debian specific solution (due to DFSG #8).

DFSG #8 is not an issue.  DFSG #4 allows authors to require changed versions
of their software to be distributed under a different name.  If the upstream
makes special allowances for Debian to use the name for modified versions,
this doesn't fail the DFSG, because everyone still has the required rights
when using the package.

> The case of the image which was created combining the GNOME foot and the
> Debian swirl seem unquestionably in violation of their trademark,

It is not "unquestionably" in violation of their trademark.  Trademarks are
*always* fuzzy things, and there are *always* questions about whether
something is a violation - questions that can only ever be settled
definitively in court.

It's perfectly fine for Debian to decide that, because the GNOME mark
holders *believe* it is infringing, we prefer to ask them for an explicit
license just to be safe.

> especially when you realize that the creator of this image was using the
> foot in this case with the specific intention of referencing GNOME.
> Until we can come up with some agreement with the trademark owners about
> using such a mark, Debian should stop distributing similar material.

There is no precedent for requiring Debian packages to avoid trademark
infringement as a condition of inclusion in the archive.  I am very much
opposed to anything that would require Debian to remove potentially
trademark infringing logos from packages "until we have agreement with the
trademark owners".  This is entirely the wrong way around - we should always
assume that our use is permitted wrt trademark law unless either a) a court
ruling determines otherwise, or b) we decide it's not in our interest to
fight a lawsuit over the matter and as a project decide to stop using the
mark.  In no event should the ftpmasters be preemptively deciding that such
works should be excluded from the archive pending an agreement unless so
directed by Debian's counsel in the course of litigation.

> As a general comment, we feel like this problem is an unfortunate
> one. This situation is one where we have people trying to limit user
> freedom via software which is in Debian, going against Debian's core
> tenets. We understand they are doing so to defend Free Software related
> marks, but that doesn't solve the underlying problem. It may also be the
> case that from Debian's point of view, the developer body as a whole
> needs to take a formal stand by means of a GR on the general issue of
> how to resolve the tension among DFSG principles and trademark
> licenses. This would clearly res

Bug#607839: Question about GNOME Trademark and GNOME project packages in Debian

[Russ Allbery]

Mike O'Connor  writes:
> On Fri, 15 Jul 2011 13:01:13 +0100 (BST), MJ Ray  wrote:

>> OK, sorry if this is an old chestnut, but do we actually need a licence
>> in general?  Is most of the use in Debian more than honest description
>> of the source of the software?

> As far as I know, we have not made any inquiries to lawyers as to how
> valid their claim to the GNOME mark is.  If their claim to the mark is
> valid, then we could be legally be required to stop using this mark.

The point isn't that the mark may be invalid.  The point is rather that
using a trademark descriptively concerning the product for which the mark
is registered is legitimate use of the mark and doesn't require any sort
of license.  It's not clear that a trademark holder can put additional
restrictions on how the mark can be used, as long as the mark is being
used to refer to the associated product and not some different product.

However, at the point that one is making that argument, one is well into
lawyer territory with murky and inconsistent outcomes in trials.

-- 
Russ Allbery (r...@debian.org)   



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Bug#607839: Question about GNOME Trademark and GNOME project packages in Debian

[Arthur Machlas]

On Fri, Jul 15, 2011 at 10:07 AM, Mike O'Connor  wrote:
> On Fri, 15 Jul 2011 13:01:13 +0100 (BST), MJ Ray  wrote:
>> Joerg Jaspert wrote:
>>
>> Is there a tension?  Isn't it obvious that many Free Software related
>> marks are not themselves free software?
>
> The way you state your question "Isn't it obvious that many Free
> Software related marks are not themselves free software?"  Makes me want
> to respond "No, trademarks are not software."  Perhaps in an "ideal"
> world we would be saying that the DSFG applies as cleanly to trademark
> issues as it does to copyright issues, but in reality it is not the
> case. The stance that we do not allow the use of any trademarks in
> Debian would be an insane stance to take, once you realize how many
> trademarks are in Debian already.  MySQL is trademarked, OpenGL is
> trademarked, we mention Microsoft, Apple, and probably a number of other
> companies.  Python is trademarked, mono is trademarked.  For that matter
> "Linux" and Debian are trademarked.  We clearly are not going to either
> remove all this software or rename it.  We ARE going to be using
> trademarks that other entities have some legal control over.  Since this
> puts us in the position of having external entities having some legal
> control over what we do with our software, this is in tension with the
> DFSG which tries to make sure I have complete control over the software
> in Debian.
>
> I believe we are going to have to make decisions about what to do about
> a trademark we are using once a trademark owner notifies us that we are
> using their trademarks in ways which they don't approve of, as it is
> happening in this case with the GNOME marks, and once we are notified,
> decide how we react.  In some cases, we should be able to dismiss a
> trademark owner's claims entirely.  Although someone owns the Git
> trademark, since our use of "git" is not likely to cause confusion to
> people, we don't have to worry of our use as infringing.  In other cases
> we might decide that our use of their mark falls under "fair use" and
> thus not infringing.
>
> When we are contacted by a owner of a trademark on which we believe we
> are infringing, the safest thing for us to do legally is to cease all
> use of the mark.  The easiest thing for us to do is to ignore their
> claim.  We'll need to figure out where we want to land between these two
> extremes, and here again, there is tension.  I don't believe it is as
> simple as you state it: "...that seems like something that will have to
> stop if the GNOME foot is not free software because of some restrictive
> TM license".  Because by that argument tells us that we have to rename
> all GNOME software, since the trademark license is restrictive about how
> we use "GNOME".
>
> I think it is clear in the case of the foot/swirl icon, which has been
> definitively identified as infringing on their mark in a way which is
> objectionable to the owners of the mark, we should cease the
> distribution and/or use of this icon.  There perhaps is little tension
> here. When they tell us that our non-compliance with their trademark
> policy in areas like using GNOME in all lowercase letters is
> objectionable, there will be considerable trouble in resolving this.
>
>>
>> It disappoints me when free software projects use proprietary frosting
>> to restrict user freedom, but it seems like an old chestnut rather
>> than a new problem requiring a new GR.
>
> Since we are in the position of having to decide on multiple different
> outcomes, none of which are 100% desirable, and that this is not likely
> to be the last time that such a situation will arise, I believe it might
> be wise to reach a consensus about how the project wants to handle these
> situations. The best means to do this might be to memorialize this using
> a GR.

One of the most absurd examples of this tension, is that Debian isn't
allowed to use the 'Official' Debian Logo in its Debian distribution.
It would be nice if during the process of unravelling this issue, via
GR or what have you, this rather embarrassing case could be addressed
as well.



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Bug#607839: Question about GNOME Trademark and GNOME project packages in Debian

[Mike O'Connor]

On Fri, 15 Jul 2011 13:01:13 +0100 (BST), MJ Ray  wrote:
> Joerg Jaspert wrote:
> > We feel that it is infeasible for Debian to be in complete compliance
> > with the current GNOME trademark license. [...]
> 
> OK, sorry if this is an old chestnut, but do we actually need a
> licence in general?  Is most of the use in Debian more than honest
> description of the source of the software?

As far as I know, we have not made any inquiries to lawyers as to how
valid their claim to the GNOME mark is.  If their claim to the mark is
valid, then we could be legally be required to stop using this mark.  

> 
> > The case of the image which was created combining the GNOME foot and the
> > Debian swirl seem unquestionably in violation of their trademark, [...]
> 
> Yes, that seems like something that will have to stop if the GNOME
> foot is not free software because of some restrictive TM licence. :-(
> 
> > [...] We understand they are doing so to defend Free Software related
> > marks, but that doesn't solve the underlying problem. It may also be the
> > case that from Debian's point of view, the developer body as a whole
> > needs to take a formal stand by means of a GR on the general issue of
> > how to resolve the tension among DFSG principles and trademark
> > licenses. [...]
> 
> Is there a tension?  Isn't it obvious that many Free Software related
> marks are not themselves free software?

The way you state your question "Isn't it obvious that many Free
Software related marks are not themselves free software?"  Makes me want
to respond "No, trademarks are not software."  Perhaps in an "ideal"
world we would be saying that the DSFG applies as cleanly to trademark
issues as it does to copyright issues, but in reality it is not the
case. The stance that we do not allow the use of any trademarks in
Debian would be an insane stance to take, once you realize how many
trademarks are in Debian already.  MySQL is trademarked, OpenGL is
trademarked, we mention Microsoft, Apple, and probably a number of other
companies.  Python is trademarked, mono is trademarked.  For that matter
"Linux" and Debian are trademarked.  We clearly are not going to either
remove all this software or rename it.  We ARE going to be using
trademarks that other entities have some legal control over.  Since this
puts us in the position of having external entities having some legal
control over what we do with our software, this is in tension with the
DFSG which tries to make sure I have complete control over the software
in Debian.

I believe we are going to have to make decisions about what to do about
a trademark we are using once a trademark owner notifies us that we are
using their trademarks in ways which they don't approve of, as it is
happening in this case with the GNOME marks, and once we are notified,
decide how we react.  In some cases, we should be able to dismiss a
trademark owner's claims entirely.  Although someone owns the Git
trademark, since our use of "git" is not likely to cause confusion to
people, we don't have to worry of our use as infringing.  In other cases
we might decide that our use of their mark falls under "fair use" and
thus not infringing. 

When we are contacted by a owner of a trademark on which we believe we
are infringing, the safest thing for us to do legally is to cease all
use of the mark.  The easiest thing for us to do is to ignore their
claim.  We'll need to figure out where we want to land between these two
extremes, and here again, there is tension.  I don't believe it is as
simple as you state it: "...that seems like something that will have to
stop if the GNOME foot is not free software because of some restrictive
TM license".  Because by that argument tells us that we have to rename
all GNOME software, since the trademark license is restrictive about how
we use "GNOME".

I think it is clear in the case of the foot/swirl icon, which has been
definitively identified as infringing on their mark in a way which is
objectionable to the owners of the mark, we should cease the
distribution and/or use of this icon.  There perhaps is little tension
here. When they tell us that our non-compliance with their trademark
policy in areas like using GNOME in all lowercase letters is
objectionable, there will be considerable trouble in resolving this.

> 
> It disappoints me when free software projects use proprietary frosting
> to restrict user freedom, but it seems like an old chestnut rather
> than a new problem requiring a new GR.

Since we are in the position of having to decide on multiple different
outcomes, none of which are 100% desirable, and that this is not likely
to be the last time that such a situation will arise, I believe it might
be wise to reach a consensus about how the project wants to handle these
situations. The best means to do this might be to memorialize this using
a GR.

stew

p.s. You used the term "old chestnut" twice.  If is some kind of
colloquialism that might carry additional meaning,

Bug#607839: Question about GNOME Trademark and GNOME project packages in Debian

[MJ Ray]

Joerg Jaspert wrote:
> We feel that it is infeasible for Debian to be in complete compliance
> with the current GNOME trademark license. [...]

OK, sorry if this is an old chestnut, but do we actually need a
licence in general?  Is most of the use in Debian more than honest
description of the source of the software?

> The case of the image which was created combining the GNOME foot and the
> Debian swirl seem unquestionably in violation of their trademark, [...]

Yes, that seems like something that will have to stop if the GNOME
foot is not free software because of some restrictive TM licence. :-(

> [...] We understand they are doing so to defend Free Software related
> marks, but that doesn't solve the underlying problem. It may also be the
> case that from Debian's point of view, the developer body as a whole
> needs to take a formal stand by means of a GR on the general issue of
> how to resolve the tension among DFSG principles and trademark
> licenses. [...]

Is there a tension?  Isn't it obvious that many Free Software related
marks are not themselves free software?

It disappoints me when free software projects use proprietary frosting
to restrict user freedom, but it seems like an old chestnut rather
than a new problem requiring a new GR.

Thanks for any explanations,
-- 
MJR/slef
My Opinion Only: see http://people.debian.org/~mjr/
Please follow http://www.uk.debian.org/MailingLists/#codeofconduct




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Bug#607839: Question about GNOME Trademark and GNOME project packages in Debian

[Joerg Jaspert]

Hello world,

[ We got asked how the Debian project (and especially us as delegates
handling the archive)  has handled trademarks in the past, and our
opinion on how restrictive Trademark licenses can (or not) lead to DFSG
freeness issues. This topic cooked up with the special example of the
current GNOME trademark license, so we base our answer on that.]

We feel that it is infeasible for Debian to be in complete compliance
with the current GNOME trademark license.  In our strict reading of this
license, the only way to be in full compliance would require us to
perform actions such as renaming packages in the form of
GNOME™-control-center.  This extreme example would conflict directly
with Debian policy on the use of non-ascii lowercase characters in
package names as well as being technically inadvisable.  Therefore, as
long as we are using GNOME marks, we are likely to be in some way
violating their current trademark license agreement. The safest thing
for us to do would seem to be to terminate all use of the GNOME marks,
and essentially rebranding the software, as was done in the case for
firefox/iceweasel.  This, however, would be a huge amount of work for
Debian with very little real payoff.  We should be able to avoid doing
all this work, as it seems that the trademark owners want to work with
us in order to find some agreeable compromise.  We therefore think that
the best way forward would be to make a best effort to correct any
specific cases which they point out to us as problematic misuse of their
marks. But we have to be careful not to end up with a Debian specific
solution (due to DFSG #8).

The case of the image which was created combining the GNOME foot and the
Debian swirl seem unquestionably in violation of their trademark,
especially when you realize that the creator of this image was using the
foot in this case with the specific intention of referencing GNOME.
Until we can come up with some agreement with the trademark owners about
using such a mark, Debian should stop distributing similar material.


As a general comment, we feel like this problem is an unfortunate
one. This situation is one where we have people trying to limit user
freedom via software which is in Debian, going against Debian's core
tenets. We understand they are doing so to defend Free Software related
marks, but that doesn't solve the underlying problem. It may also be the
case that from Debian's point of view, the developer body as a whole
needs to take a formal stand by means of a GR on the general issue of
how to resolve the tension among DFSG principles and trademark
licenses. This would clearly resolve this issue once and for all,
especially given that this is the second major instance of a similar
issue. We therefore ask the DPL to consider raising the issue with the
project as a whole, most likely after any initial discussions with the
GNOME foundation have concluded.

-- 
bye, Joerg, for the FTP Team
Trying is the first step towards failure.



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