[steering-discuss] Trademark Policy of the Document Foundation

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:

Hi Alex,

> I suppose they need permission :slight_smile:

..

With the caveat of the "fair use" exception, which does not require

  Sure, sure - however, we cannot write a single document for every
jurisdiction that covers all notions of fair-use, and is yet readable,
and helpful.

  Certainly - copyright only works in some jurisdictions - but we still
have licenses left and right that assume it works everywhere :slight_smile: So - do
you see a problem with broadly laying out what we do and don't expect ?

  Honestly, I expect the SC to be very forgiving for all legitimate and
constructive users.

  ATB,

    Michael.

Sorry folks,

are we good on the TM policy? I'd like to move forward on this...

Best

Hi,

are we good on the TM policy? I'd like to move forward on this...

looking at it is still on my todo, hope to manage it next week.

Florian

I am, of course.

Oh ! did we fold in the Redhat advice ? (which seemed good to me) - I
believe we did not, it would be worth someone carefully doing that I
suppose.

  ATB,

    Michael.

Hi,

I uploaded the latest changes and modified the text accordingly, it
incorporates many, if not most of the changes from RH:
http://wiki.documentfoundation.org/TradeMark_Policy

best,
Charles.

Hi,

@Bernhard: now we "just" need the logos without the TDF mention to be put on
a page with its source on the wiki, and I think we'll be ready to announce
our trademark policy.... Do you think you or Christoph can do that?

Thank you,
Charles.

Hi Charles, *

CC'ing the design list...
(follow-up on the logo design should be there, on the general questions here on steering-discuss)

Charles-H. Schulz schrieb:

Hi,

@Bernhard: now we "just" need the logos without the TDF mention to be put on
a page with its source on the wiki, and I think we'll be ready to announce
our trademark policy.... Do you think you or Christoph can do that?

Great to hear that - but I didn't know that this logo is a precondition for the announcement.

I'm sorry that we didn't finalize the logo - main problem is, that there is a reasonable reason to modify the logo a bit, but we didn't manage to discuss the advantages and disadvantages in detail.

As you know there are important task to work on *right now* - and we still do this without having defined the general visual basis for our community...

Following the Branding Guidelines it is possible to use one or two parts of the tripartite logo (symbol, libreoffice text and TDF text) alone, so it is possible to create the "logo without TDF subline" by using the present logo.

I don't know how strong you see the relationship between the logo and the trademark announcement, but I can live very well with this version of our logo for some time - perhaps until the release of LibreOffice 3.4, when we might introduce the updated logo (just my personal opinion - we'll discuss this on the design list).

When I find the time tonight, I'll be working on the logos.

Just to be sure I understood how you (and the trademark policy?) want to propose the use of our logos:

a) *The product* itself contains the *logo with TDF subline*.
We provide these binaries via our mirror system.
Distributors of the unmodified binaries are allowed to distribute the product, so they distribute it with the TDF subline inside the product.

b) *We* refer to the product and our community on our website, on marketing material, fair booths and other means by a *logo with TDF subline*.

This is only allowed for
- official community representatives (SC and board members described in the bylaws).
- officially approved international, language based or regional teams (including TDF members approved by the Membership Committee, so their work is led by the Community Bylaws) in consent with their dedicated mailing lists. If there is any doubt on the team's legitimation, a formal request here at the steering-discuss list is necessary.

c) *Single community members* and *other people* referring to our product and the community are not allowed to use the logo with TDF subline. This should avoid misinterpretation of their references as official community statements and presentations.

They should use the new *logo without this subline* we're going to provide.

What logo should be used if external references point to the foundation?

Do we need a logo for The Document Foundation (once it is established) without the "LibreOffice" text? Do you think of another possibility to distinguish official usage and external reference?

Best regards

Bernhard

Hello Bernhard,

Hi Charles, *

CC'ing the design list...
(follow-up on the logo design should be there, on the general
questions here on steering-discuss)

Charles-H. Schulz schrieb:
> Hi,
>
> @Bernhard: now we "just" need the logos without the TDF mention to
> be put on a page with its source on the wiki, and I think we'll be
> ready to announce our trademark policy.... Do you think you or
> Christoph can do that?

Great to hear that - but I didn't know that this logo is a
precondition for the announcement.

No, it's not really a precondition. We could go ahead but then people
would ask us: where are the logos we're supposed to use?

I'm sorry that we didn't finalize the logo - main problem is, that
there is a reasonable reason to modify the logo a bit, but we didn't
manage to discuss the advantages and disadvantages in detail.

As you know there are important task to work on *right now* - and we
still do this without having defined the general visual basis for our
community...

absolutely.

Following the Branding Guidelines it is possible to use one or two
parts of the tripartite logo (symbol, libreoffice text and TDF text)
alone, so it is possible to create the "logo without TDF subline" by
using the present logo.

yes, that's the point.

I don't know how strong you see the relationship between the logo and
the trademark announcement, but I can live very well with this
version of our logo for some time - perhaps until the release of
LibreOffice 3.4, when we might introduce the updated logo (just my
personal opinion
- we'll discuss this on the design list).

When I find the time tonight, I'll be working on the logos.binge

thanks. To me it's a practical issue. We can release the TM policy now.
But we won't be able to enable people to do "the right thing" because
the logos won't be ready. TM policy exists in its own right, as it
covers other areas and even other aspects of the question, so we could
release it now although I fear it will end up being confusing.

Just to be sure I understood how you (and the trademark policy?) want
to propose the use of our logos:

a) *The product* itself contains the *logo with TDF subline*.
We provide these binaries via our mirror system.
Distributors of the unmodified binaries are allowed to distribute the
product, so they distribute it with the TDF subline inside the
product.

The mention "TDF" only
applies to what comes out of TDF and the mirrors listed here. But you
cannot use the TDF mention on a DVD that's not an official DVD from
TDF. So yes, we're talking about unmodified binaries downloaded via our
mirroring system, which means: you can only get them by downloading the
binaries here or in the specific case of the linux distros (that's
explained in the TM policy).

b) *We* refer to the product and our community on our website, on
marketing material, fair booths and other means by a *logo with TDF
subline*.

Yes.

This is only allowed for
- official community representatives (SC and board members described
in the bylaws).
- officially approved international, language based or regional teams
(including TDF members approved by the Membership Committee, so their
work is led by the Community Bylaws) in consent with their dedicated
mailing lists. If there is any doubt on the team's legitimation, a
formal request here at the steering-discuss list is necessary.

Yes.

c) *Single community members* and *other people* referring to our
product and the community are not allowed to use the logo with TDF
subline. This should avoid misinterpretation of their references as
official community statements and presentations.

Yes.

They should use the new *logo without this subline* we're going to
provide.

Yes.

What logo should be used if external references point to the
foundation?

Well, I don't think we have one, but we could come up with one. ATM,
only external references pointing to TDF should use the full logo with
the TDF subline.

Do we need a logo for The Document Foundation (once it is
established) without the "LibreOffice" text? Do you think of another
possibility to distinguish official usage and external reference?binge

It might be helpful, although we certainly can release the TM policy
without this particular one.

Here's what we can do: I will copy and paste parts of your email on a
wiki page specifically for the logo usage. I will link from and to it
on the TM policy page as it fully complements it. Then, I would like us
to be ready asap on this. The LibreOffice logo without the TDF subline
and its sources should be available, and as soon as it is, we can
release the TM policy. Otherwise it won't make a lot of sense.

What do you think?

Charles.

Hello Charles, all,

one single point to clarify:

Charles-H. Schulz schrieb:

[...]

> Bernhard Dippold wrote:

a) *The product* itself contains the *logo with TDF subline*.
We provide these binaries via our mirror system.
Distributors of the unmodified binaries are allowed to distribute the
product, so they distribute it with the TDF subline inside the
product.

The mention "TDF" only
applies to what comes out of TDF and the mirrors listed here. But you
cannot use the TDF mention on a DVD that's not an official DVD from
TDF. So yes, we're talking about unmodified binaries downloaded via our
mirroring system, which means: you can only get them by downloading the
binaries here or in the specific case of the linux distros (that's
explained in the TM policy).

This could be understood as if it would not be allowed to distribute the unmodified binaries by other means than via our mirror service.

In my understanding it has to be clear that people are allowed to distribute our product, burn it on CD/DVD, copy it on USB-Stick or any other device as long as the binaries have not been modified.

This product will (of course, as it is unmodified) contain the logo with TDF subline.

But when they refer to this product, print the logo on the label or cover, advertise it on their homepage or present it on a download page, they have to use the logo without subline.

Even if they distribute our unchanged product it is necessary to avoid the impression as they would represent the community and/or TDF as producer of the office suite.

Did you mean it this way?

Best regards

Bernhard

Hi Charles, all,

Charles-H. Schulz schrieb:

Hello Bernhard,

Hi Charles, *

CC'ing the design list...
(follow-up on the logo design should be there, on the general
questions here on steering-discuss)

Charles-H. Schulz schrieb:

Hi,

@Bernhard: now we "just" need the logos without the TDF mention to
be put on a page with its source on the wiki, and I think we'll be
ready to announce our trademark policy.... Do you think you or
Christoph can do that?

[...]

When I find the time tonight, I'll be working on the logos.

thanks. To me it's a practical issue. We can release the TM policy now.
But we won't be able to enable people to do "the right thing" because
the logos won't be ready. TM policy exists in its own right, as it
covers other areas and even other aspects of the question, so we could
release it now although I fear it will end up being confusing.

Here you are:
http://wiki.documentfoundation.org/Marketing/Branding#Resources_for_external_use

Even if I'd like to design our resources more user-friendly, I hope this will work.

Best regards

Bernhard