Subject: RE: [Fwd: FW: For Approval: Generic Attribution Provision]
From: "Lawrence Rosen" <lrosen@rosenlaw.com>
Date: Wed, 13 Dec 2006 09:10:43 -0800

Larry Augustin wrote:
> I don't believe you need a license to the trademark Foo to say a piece of
> software is "Foo-based", "derived from Foo", or "based on Foo".  That's
> simply an expression of fact describing the origin of the code in the
> derivative work.  I believe you could require attribution of that form
> without granting a license to the trademark.

Quite true, although one probably should be careful then not to confuse
those phrases--in the minds of consumers--with actual trademarks or
certification marks so that consumers are misled as to the source or origin
of the goods, or believe that there is some assurance of quality because the
"attribution" notice is there. When an attribution notice is designed to
serve the purposes of a trademark, it may be difficult to deny later that no
trademark license was intended.

And so we return to the central question: What are the limits under open
source rules to such factual statements of attribution that a FOSS license
can *require* in the UI of all derivative works:

   "Lovingly merged with the outstanding software 
    I received from Joe Foo and that bears the FOO
    trademark" must be displayed in all derivative 
    works in 48-point characters at the top of the 
    main WELCOME screen.

One suggestion, I gather, is that we leave such decisions to the software
marketplace rather than state a rule for the OSD. As a potential licensee,
if I don't think Foo software is outstanding, or if I'm not willing to
declare the fact that I merged it in lovingly, or if I just don't want to
allocate screen space to Joe Foo's message, I can simply refuse to base my
derivative work upon Foo. 

/Larry


> -----Original Message-----
> From: Larry M. Augustin [mailto:lma@lmaugustin.com]
> Sent: Tuesday, December 12, 2006 11:21 PM
> To: license-discuss@opensource.org
> Subject: RE: [Fwd: FW: For Approval: Generic Attribution Provision]
> 
> I don't believe you need a license to the trademark Foo to say a piece of
> software is "Foo-based", "derived from Foo", or "based on Foo".  That's
> simply an expression of fact describing the origin of the code in the
> derivative work.  I believe you could require attribution of that form
> without granting a license to the trademark.
> 
> Trademark usage around Open Source is a whole other area that needs some
> attention.
> 
> Larry
> 
> --
> Larry M. Augustin
> 
> > -----Original Message-----
> > From: Lawrence Rosen [mailto:lrosen@rosenlaw.com]
> > Sent: Tuesday, December 12, 2006 10:24 PM
> > To: license-discuss@opensource.org
> > Subject: RE: [Fwd: FW: For Approval: Generic Attribution Provision]
> >
> > > On Mon, 11 Dec 2006, Dalibor Topic wrote:
> > > > I'd say that badgerware that requires displaying and propagating
> > > > trademarked logos, is fundamentally contrary to the idea of
> > > > open source, since it makes it very hard to actually fork the
> > > > code without running foul of trademark laws.
> >
> > Brian Behlendorf responded:
> > > No, not really.  If I tell you that you must include this logo in this
> > way
> > > in the UI of your redistributed work, then I am implicitly but
> > inarguably
> > > giving you a license to trademark rights I might have in that logo and
> > > name, limited to usage as defined by that license.
> >
> > Brian, if you give me a license to trademark rights you have in your
> logo
> > and name, and thereby allow or require me to apply that logo or name to
> my
> > derivative works over whose quality you have no control, you are likely
> to
> > lose your trademark.
> >
> > Dalibor Topic's fear (from the vantage point of the licensee who forks)
> is
> > not realistic because forking is always allowed for open source software
> > regardless of the trademarks it bears, but the licensor should fear that
> > his
> > trademark will become useless if he requires it to be displayed on those
> > forks.
> >
> > The stronger the GAP requirements to include licensor's logo and
> trademark
> > in prominent places on uncontrolled goods, the more likely the loss of
> the
> > trademark. Given that reality of trademark law, I'm curious why so many
> > companies seem to want such strong attribution in UIs of other
> companies'
> > modified software?
> >
> > /Larry
> >