Subject: Re: APL license - What about the enforced logos?
From: Rick Moen <rick@linuxmafia.com>
Date: Wed, 29 Nov 2006 18:27:20 -0800

Quoting Matthew Flaschen (matthew.flaschen@gatech.edu):

> I am very interested in that particular issue.  It seems to me that
> they're relying on Lanham "false designation of origin".  However, if
> the origin is fully explained ("Compiled by CentralOS Foundation from
> ScarletSombrero Enterprise Linux sources, after removing all
> ScarletSombrero trademarks and images.  ScarletSombrero Enterprise Linux
> and ScarletSombrero are registered trademarks of ScarletSombrero, Inc.")
> this seems to void.

Exactly so.  Nor can Scarlet Sombrero, Inc. legitimately require that
CentralOS remove all mentions whatsoever of "Scarlet Sombrero" from the
CentralOS Web site -- which excessive demand in my (purely hypothetical)
scenario was made and complied with.

For completeness:  There's a third type of trademark violation[1], often
called trademark disparagement (or tarnishment), where you drag someone
else's mark through the mud by associating it with unsavoury things and
thereby diminish its value.  People sometimes fall afoul of this
principle when they "parody" some corporate entity, e.g. making a
cartoon where Mickey Mouse does something unwholesome to prove a point
about Disney Corporation.  Claiming it's parody isn't an effective
defence, nor does it matter that your usage was non-commercial.  It's a
tort.


["OSI Certified" certification mark:]

> Unfortunately, this mark currently has far too many false negatives to
> be reliable.  I do think distributors should be strongly encouraged to
> use it.

Good point!


[1] Alongside infringement and _dilution_, which I forgot to detail:
Ordinarily, proving trademark infringment requires showing likelihood of
confusion.  However, new legislation in 1995 permitted owners of
particularly distinctive and famous marks (Coca-Cola, Kodak, Reebok,
Xerox) to wield trademark law with a legal presumption that _any_
third-party use is confusing.

That legislation was the Federal Trademark Dilution Act, 15 USC 1125(c).
Many states also have anti-dilution statutes.  Also relevant, where
Internet domain names are at issue, is the Anti-Cybersquatting
Protection Act, 15 USC 1125(d), enacted 29 November 1999 as Section
43(d) of the Lanham Act.  See discussion at
http://www.chillingeffects.org/documenting/notice.cgi?NoticeID=588 .