The SFLC's Eben Moglen and Mishi Choudhary on Trademarks Enforcement for Free Software Projects (Kodi, Debian Etc.)
Video: Eben Moglen and Mishi Choudhary: 'Review and Discussion of FOSS Legal Issues' (SFLC 2017)
THE 2017 session (uploaded in 2018 by SFLC) is interesting for things it says about trademarks in relation to Free software. The above is just a portion in a free/libre format (time range 10:00 - 19:57). Here's a transcript:
Eben Moglen: Let's just transpose that back to the layers of lawyer's work. We could go back a step of course because XBMC became Kodi because a BMC out there decided that, right, and we could call that in a way the old style Free Software trademark. Old style free trademark law was we used to have a project called gAIM and a thing that has stopped existing now called America Online Messaging decides that would be a real problem for their good will. And as counsellors of people in the stage one free software trademark world goes we mostly say to people, well why don't you change your name? I mean, and so Pidgin results. Or Kodi results. And you could think of that in a way as the static[01:00]
end state of trademark law phase one. Trademark software law phase one in the Free software world is people choose software names and it turns out someone wants to push them around about it. It's easier to move them and for most of my practice in phase one we help projects rename themselves. Because why should you go to war over something that doesn't matter.
In phase two we then find ourselves
[01:30]
writing trademark policies, or so once again I should say I find myself watching Mishi write trademark policies. In phase two we are essentially helping Free Software projects hollow out trademark a little bit not quite as much as they hollow out copyright and copyleft, but still basically with the idea that if the purpose is to share the code there are reasons why you share trademarks. For example with respect to Debian that is a really important
[02:00]
part of thinking about trademark policy writing. The Free Software project or distributor has a rather different set of lines that it wants to draw in respect to who's allowed to use the mark and sometimes the text and not the graphic or sometimes both and what should be the rules that you apply to that. As my own client in respect to Freedom Box, that becomes the major issue for us. We care about Freedom Box mark in the long term I want the
[02:30]
blue butterfly and the Freedom Box mark to be associated with lots of different single board computers making themselves into privacy appliances around the world. But I want to make sure that all the software in there is Free Software and it has no NSA inside. And so a trademark policy is more about the content quality assurance than it is about refusing to allow people to use the mark. And you could think of the end stage, stable state of the stage two as we have
[03:00]
learned how to write the various kinds of trademark policies that Free Software projects might want. And in the same way that we were talking this morning about the evolution of a relatively small number of licenses as the standardization of shared resources in copyright management, we also come to the state where we have got a fairly clear set of trademark related policies that projects might want to have.
[03:30]
As Mishi said, the next step is of course the nesting. Debian has a lot of marks. Canonical downstream has a lot of marks. They may wish to think about those marks a little differently and how the enclosure works as projects move down the stream from [the] project upstream to totally free distributor to almost totally freely distributor to perhaps not quite so totally free distributor, we'll also nest trademark rules and those nesting
[04:00]
rules are the end of stage two. And Mishi has rightly said that if you want to learn all about that we published an article about it earlier this year because it was time to write up the results.
Nate is talking about stage three, which is a whole new world for us in trademark problems. Here the project has a mark, but its mark isn't universal everywhere on Earth for reasons of cost, and efficiency, and all the other things that we face as advisors to Free Software
[04:30]
projects. Other people out in the world go and mark marks and then maybe killing off the sharing we wish to have. Other people can't use the mark even though we would want to let them because some intervening squatter has decided to set more restrictive rules and instead of just being about quality of goods, we are now also about something which includes for example "piracy" of content and foreign relations that is to say
[05:00]
with media companies who are more concerned about whether we are helping "piracy" than they are concerned about our mark but they would damn well get some help from us about the mark if they could.
Mishi Choudhary: That does happen quite a lot. That's the only time we found ourselves on their side which is not very common.
Audience: It was very strange to have a positive conversation with the MPAA
Mishi Choudhary: Yes, and
[05:30]
various such small acronyms et cetera. I think what Free Software projects are also like in the phases Eben is talking about are trying to balance the idea that their software should be widely used and yet they do not want to lose their good will and reputation which comes with this mark. And now, as we see this other problem when monetization of the mark is what is causing this other problem for this projects
[06:00]
we are now beginning to understand that there is more we will have to do. Businesses here are very accustomed to the idea that part of the reason they enforce their trademarks is because their good will is valuable and the quality and reputation of their product is at stake each time somebody comes up and uses it to do something which even the project would not do, like stopping other people from distributing products which is now happening in the
[06:30]
case of Kodi. Another client of ours who is not present here but we'll discuss what is already out in the public domain about this information is Monero. It has a similar problem. It has actually two problems, one of which is of course that people are taking javascript and putting it in other people's web sites to mine their coinage which ultimately looks like as if it has something to do with the project, which it doesn't. But the other problem is
[07:00]
somebody else goes and registers the name itself or something which is confusingly similar to Monero, and now Monero itself is shut out from that country or has to fight this uphill battle of trying to protect their own mark before even they can think about what's happening with their trademark policy. So that's another thing which we have been working on. So, reputation, good will, which even lawyers are pretty sensitive to.
[07:30]
If we don't practice law in an ethical way, that's bad for us but all we are saying is that trademarks have become something which makes appearances in different forms for our projects and the work which we have traditionally been doing we have to do that for sure but you also have to put more resources on top of it to protect the reputation of projects.
Eben Moglen: We're going to see I think without any doubt more
[08:00]
situations arising for Kodi and Monero in which second order trademark issues how they affect other aspects of the project's life and its alliances and adversarialities and the marketplace. We'll come to present work that the projects themselves are in no position to fund or resource. You could think about this as in part the necessary consequence of non-commercial
[08:30]
property in the first place. You would like to think that highly solvent businesses register their businesses around the world perfectly and that the consequence is that nobody can do this to them and so they don't have the problems. My own experience in practice shows me that's not right either. It's just that usually when it does happen that somebody loses a mark somewhere in the world there is a lawyer who can be blamed for it. And fortunately for us in these cases there is no lawyer who can be blamed
[09:00]
for what has been happening to our clients, we didn't do it. But we did after all try and economize on the filing fees and other costs around the world of universalizing our clients' trademarks because they couldn't afford for us to work for them as they would have been worked for if they were been highly profitable businesses. It's not that we're charging, we don't usually charge, it's that the trademark offices around the world charge. The consequence is
[09:30]
we live with spottier coverage than most businesses in the world would be willing to accept on consumer products. And therefore the squatting is possible. But it isn't merely freeing the mark from the squatter which now becomes the problem as with Nate and Kodi it becomes the secondary consequences of having people out in the world wearing your mark and doing things which reflect on you in an adverse way.
Remember that "SFC" misused the trademark "SFLC" (removing the L) to make an imitation organisation, and after repeated warnings was sued for it. "FSFE" also misuses the name "FSF" and was repeatedly cautioned by FSF management about it (no legal action, the FSF refrains from looking litigious). No wonder both SFC and FSFE (FSF-EEE) try to demonise and muzzle Eben Moglen, using joint press releases that boil down to character assassination, followed by their associates comparing Professor Moglen to a wife murderer.
Debian misused the Debian (trade)mark to censor a person who actually made parts of Debian, in effect looking to guard its image by leveraging trademark law and hijack someone's site domain. Here's the latest on this saga. â–ˆ