Because of a number of hardware related problems (hard drive failure affecting my $HOME recently, and a physical move and ISP change affecting the MX host for my domain), it is difficult to coordinate a discussion of my work on a new trademark-management policy for Debian via email -- and IRC demands that any participants synchronize their schedules. Therefore I am placing my thoughts here and I invite your discussion, questions, and commentary. -- ?BrandenRobinson 2006-10-28 17:31:23

Background

As many of you know, there is an uncomfortable tension between the Debian Free Software Guidelines (DFSG)[1], and the nature of trademark law as it applies to copyrightable works. This tension is particularly painful in the case of "branding" materials that serve to mark the identity of a work and/or its producer, and often imply some degree of endorsement by that producer. A case in point are logos, such as our Open Use and Official Use Logos[2].

(Note that the context of my discussion is U.S. law, but as I understand it, various international treaties ensure that essentially the same problems arise in most or all jurisdictions where the Debian Project has a measurable presence.)

Historically, Debian has been unable to do much to resolve these tensions because it did not own the copyright in the logos; that was retained by the logos' creator, Raul Silva.

A little over one year ago, Mr. Silva executed a copyright assignment to Software in the Public Interest, Inc. (SPI). SPI's legal counsel, Greg Pomerantz, acknowledged receipt of this assignment on 23 September 2005. Martin Michlmayr was instrumental in seeing this process through.

We are therefore at a point now where we can develop a trademark/copyright policy that more closely reflects our desires. Many on this list, including myself, have expressed dissatisfaction with the rigidity of trademark law, mainly because it all but compels trademark holders to behave aggressively to those who attach a trademark to a work that has been customized by someone other than the trademark holder.

Sadly, the Free Software community in general has not developed trademark policies for copyrighted works that have meshed very well with the DFSG, nor with the Open Source Definition[3], nor even with simpler statements such as the Free Software Foundation's "Four Freedoms"[4] that many of us consider essential properties of Free Software.

The reason for this is that when a trademark applies to a work of Free Software, and a third party exercises his or her license to modify that work consistent with DFSG #3, OSD #3, or the FSF's Freedom 3, the work is no longer the product of the trademark holder, and distribution of the modified work can be considered "passing off" in common-law jurisdictions such as the United States. Black's Law Dictionary, Seventh Edition, defines "passing off" as:

If a trademark has been registered with an appropriate government authority, such as the U.S. Patent and Trademark Office (USPTO), then the scope of remedies typically becomes greater. In the U.S., the relevant law is referred to informally as the Lanham Act, and is codified in Title 15 of the United States Code.

That a modifier and distributor of a trademarked work is really engaged in "passing off" when they engage in activities explicitly endorsed by the same work's copyright license would, I would think, raise a significant and plausible defense, challenging the requirements of "false representation" and intent to "deceive" -- but the Debian Project strives to avoid litigation, and to honor the desires of upstream authors and other rightsholders, regardless of the plausibility of their legal theories of remedy.

The reasons for this are twofold; firstly, we do not have deep pockets, and while that might make us a less desirable target for recovery of damages, we do not want to expend the modest assets we have on defending lawsuits.

Secondly, and more importantly in my view, I think there is a case to be made that when we ship a work in main, we are representing it to the broader community as a positive example of Free Software. In a way, we are helping those in the Free Software community to get to know their good neighbors, their fellows who participate cooperatively in the overall mission of empowering each and every individual computer user to assert control over their environment in a way that creators of proprietary software deliberately withhold.

Examples of the Free Software community's difficulty with developing a copyright and trademark policies for logos include ?AbiWord[5], Mozilla Firefox[6]...and ourselves[7].

Both representatives of ?AbiWord and Mozilla Corporation noted the licensing terms we have on our Open Use Logo criticized us for holding them to higher standards than we held ourselves.

To review, the license on our Open Use Logo reads, in full:

This fails most interpretations of the DFSG I've seen on over the years, because (perhaps among other flaws), it withholds permission to even *use* the logo for an unapproved purpose, such as *not* referring to the Debian Project. It isn't really a copyright license at all -- it's much closer to a trademark license.

However, to my knowledge, no trademark-using project in the Free Software community has done anything more productive than point out that we all live in the same glass houses.

After being piqued by yet another iteration of the same old sort of tired trademark problems, and discussing the issue with Anthony Towns[8], I'd like to take some action.

I propose that we rise to the challenge.

Proposal

There is one further point I should mention, but it's not part of this proposal proper, because I recommend only that we continue with the status quo:

Consequences

* NathanaelNerode writes: Only just discovered this page. There are fundamental problems with the "no restrictions" approach. We actually want the swirl to represent Debian. It is just fine to give permission for it to be used to identify anything "Debian-based"; but quite frankly what if a ?RedHat-based distribution or a version of Microsoft Windows decided to use it? Palming off is a real issue, and we really do want to prohibit it, and it really is Free to prohibit it. We just want to be careful not to prohibit anything *except* palming off, to put it simply.

Notes

[1] http://www.debian.org/social_contract#guidelines

[2] http://www.debian.org/logos/

[3] http://www.opensource.org/docs/definition.php

[4] http://www.gnu.org/philosophy/free-sw.html

[5] http://lists.debian.org/debian-legal/2004/10/msg00236.html

[6] http://bugs.debian.org/cgi-bin/bugreport.cgi?bug=354622

[7] http://bugs.debian.org/cgi-bin/bugreport.cgi?bug=212895

[8] Our current Project Leader, if you didn't know...

[9] The full text of the MIT license is:

[10] To view our trademark record:

  1. Go to: http://tess2.uspto.gov/bin/gate.exe?f=tess&state=afiq83.1.1

  2. Click "New User Form Search (Basic)".
  3. Enter "Debian" into the "Search Term" input box.
  4. Click "Submit Query".
  5. View the record.
  6. Click "Logout".

[11] http://lists.debconf.org/lurker/message/20060816.211727.f0201cbc.en.html

Discussion

Please note that the above is a draft.

I have had further discussions with Anthony Towns on this subject, and I still have to integrate his remarks from our IRC discussion. I hope to do that in the coming days. Here is a really brief summary.

Anthony is very keen on establishing a "Partners" program. I like the idea as well, but he and I mildly differ on the exact terms of the automatic licensing that would attach to it. He would like to ensure that partners have a public bug tracking system and some straightforward way of publishing the "diffs" between official Debian packages and the ones the partner changes. Myself, I like the elegance of simply licensing the a partners-logo trademark automatically if and only if the would-be partner complies with the copyright licenses on all the works from Debian they distribute.

There are some technical changes that would have to be made to some packages, and not just to realize the above policy (instances of the Official Use logo would have to be removed, and instances of the Open Use logo with the word "Debian" in the non-free font in them would have to be edited or removed). We would also likely need to make base-files and other core packages "brandable" in some way. We might also want to break the semantics of /etc/debian_version up a little bit, perhaps with an /etc/vendor file or something like that which can be used to answer the distinct questions:

I pointed out to Anthony that dpkg's lack of support for diverting conffiles (with dpkg-divert) makes it needlessly tedious to perform "branding" operations, because files like /etc/issue and /etc/issue.net are conffiles, yet have the word "Debian" hard-coded into them.

I welcome your insights. -- ?BrandenRobinson 2006-10-28 17:31:23

I suggest that we show a good example and drop all restrictions on the use of Debian trademarks. After that Debian Free Trademark Guidelines could be drafted that would describe requirements to allowed trademark licences for packages in Debian main. There is little to gain from enforsing trademarks except a chance to sue someone. That is of no use in the free software world and should be strongly discouraged. -- ?AigarsMahinovs 2006-10-28 18:06:53

Proposals by Nathanael Nerode

Here's a rough draft suggestion for a trademark license template for something like the Open Use logo, which matches exactly what we want, I think. It has gobs of explanatory text, because I couldn't figure out how else to make it crystal clear. :-/

Now, for the Official Use Logo, I think the change would be:

Now, for the word "Debian", I think the change would be:

As you may have guessed, I disagree strongly with Aigars. Traditional trademark rights are genuinely worth enforcing. If we give up on basic trademark rights, we might as well stop allowing name-change clauses *and* attribution clauses in copyright licenses, both of which are intended to accomplish much the same thing. In order to set a good example, what we need to do is demonstrate that trademarks can be used in a responsible, non-overreaching way. This is akin to using free software licenses rather than just throwing stuff in the public domain.

The serious defect in my proposals is that the license is not generic; it has to be reworded for each trademark. This was a side effect of making it very, very, very clear. I would love to see a generic license which accomplishes the same goal. (Note that the licenses do *not* require that they be copied along with any use of the trademark, unlike most copyright licenses, so the bloat problem isn't nearly as bad, but it's still a problem.)

-- NathanaelNerode 2007-04-12 11:11:59