Re: [GNU-linux-libre] Usage of NINTENDO, MAME and other trademarks

[Jean Louis]

Hello Stephen,

On Sat, Apr 02, 2016 at 05:52:35AM -0400, Stephen Clement wrote:
> No, I'm requesting for you to provide a counterexample, showing that it is a
> credible threat.

You should read my previous emails, and if you wish to take care of
trademark usages in free software distributions then, read the FSDG on
issue of trademarks, learn what are goods and services, determine if the
trademarks I was mentioning are actually trademarks, anywhere in the
world, even though I have referenced to USPTO, and then you determine is
the trademark used in the software packages I mentioned for the same or
similar class of good and services.

The way to go is not to "assess the threats". But rather to asses the
own usage of trademarks, to avoid future threats.

> There are two separate issues at play here. Could GuixSD be at risk, and
> could further distributors also be at risk?

Both are at risk.

I don't see why would GuixSD and other free software distributions, at
all distribute software that cannot be copied and sold commercially
without fork and modifications. That is not in the spirit of free
software philosophy.

GuixSD is at risk for 2 things as you mentioned, using it commercially
as they do receive donations, this could be considered by some courts
"commercial". The other one is the risk of infringing on the trademark
for the "trademark dillution" reasons.

And overall, responsible parties for distribution shall be still
consider the global impact. As trademark law in one country is not same
like in other country. Judges may react totally different within one
court, and unspoken of different countries.

That is why great legal care has to be taken when including ANY
trademarks in free software distribution, including those at first sight
"friendly" trademarks.

> Given that it's basically impossible to distribute an operating system in
> the United States commercially without infringing patents, sometimes it's
> worth distributing regardless, and I see that GuixSD has on many other
> occasions decided to distribute packages which infringe patents, and make
> reference to trademarks.

I would assume out of the whole discussion, that the developers or
parties, don't have proper legal background neither some attorney to
help on those matters. They did not simply observe nor put attention on
patents or trademarks. I have not read that they have been aware of
using tradmarks, and then releasing it without thought. In that case,
everyone who receives the distribution in good faight and starts selling
it is at risk - and I mean worldwide.

> In particular, I see that GuixSD also includes many tools which include
> other registered trademarks, among them:
> gtk-vnc (VNC is a registered US trademark)
> idle3-tools ("Change or disable Western Digital hard drives' Idle3 timer")
> libbluray (owned by Sony, no less)
> libtorrent (".. BitTorrent ...")
> libvisio ("... Microsoft Visio ...")
> etc.

That is good to observe. In regards to VNC® trademark:
https://www.vnc.com/trademarks.html and it should be obvious that owners
of the trademark do not allow the usage for other purposes. It should
not be used in any distribution as it pollutes the distributio and
software freedom.

Using trademark in the name of the package need not be
infringement. Because gtk-vnc as name of package is not same as VNC, as
VNC is maybe not "well known" trademark, and it would be difficult for
them to prove that gtk-vnc is confusingly similar to vnc. But I am not
attorney, that is to be handled by attorneys.

The problem is in the name of the package:

VNC viewer widget for GTK+ where trademark is directly used to promote
the software which is in the same class of services or goods as VNC
trademark.

The name of package shall be something like:

"Remote viewed widget for GTK+ compatible with VNC software" -- but that
is my opinion, it shall be legally confirmed. In that manner, one does
not use the trademark, rather refers to it.

There is documentation on GNU:
http://www.gnu.org/prep/standards/html_node/Trademarks.html

And there is a good example of how to refer to trademarks:

What is legally required, as regards other people’s trademarks, is to
avoid using them in ways which a reader might reasonably understand as
naming or labeling our own programs or activities. For example, since
“Objective C” is (or at least was) a trademark, we made sure to say that
we provide a “compiler for the Objective C language” rather than an
“Objective C compiler”. The latter would have been meant as a shorter
way of saying the former, but it does not explicitly state the
relationship, so it could be misinterpreted as using “Objective C” as a
label for the compiler rather than for the language.

> With the exception of idle3-tools, all of them go so far as to incorporate
> the trademark directly into their name. None of these are created by the
> trademark holder, but are compatible. Mupen64 and the like are in a
> similar

Sorry, I have to object and be very specific.

- The usage of VNC trademark is clearly not compatible.

- The usage such as "Change or disable Western Digital hard drives'
  Idle3 timer" is absolutely alright. Because the software is (1) not in
  same class of good and services, it is software, not hardware. Western
  Digital hard drives are hardware. Those are much much different
  classes of goods and services. Trademark Western Digital is registered
  for computer disk drives. One shall still take care not to use it in
  wrong way, such as: "Western Digital software to fix hard drives". The
  usage such as "Change or disable Western Digital hard drives" does not
  use the mark, it referrs to it.

- owned by Sony is not problematic, it is not usage of trademark, but
  rather refers that something is owned by Sony company. 
  
- bittorrent is a trademark. And usage is incorrect in the package
  name. One could refer to it, to avoid direct usage of the mark.

- "Library for parsing the Microsoft Visio format" is alright, it does
   not use the trademark. Words "Microsoft Visio" are not a
   trademark. Microsoft is trademark, but what they wish to say is
   rather "Library for parsing the Microsoft's Visio format", and that
   shall be correct, regardless if VISIO is registered trademark.

   It would be incorrect like this:

   "Microsoft Visio library for parsing", that would infringe on
   Microsoft and Visio together. But in that manner, they are doing it
   right.

Jean Louis