Subject: RE: NCSA Open Source License
From: "Lawrence E. Rosen" <lrosen@rosenlaw.com>
Date: Sun, 20 Jan 2002 12:29:28 -0800

You asked for clarification of my earlier email about trademark
licenses.

Under trademark law, a trademark cannot be licensed by itself.  To be a
valid license, the licensor must retain control (usually an approval
right) over all goods or services bearing the trademark.  A licensor
cannot simply allow his trademark to be used on third parties'
derivative works.  Those third parties must seek separate trademark
licenses under which the licensor will *approve* the licensee's
derivative works after he or she reviews them for quality.  

This trademark law requirement is inconsistent with the objective for
free and open source software to be freely modifiable without additional
permission (OSD #7).  

Absent a trademark license, however, open source licensees can freely
create derivative works. They simply cannot apply the licensor's
trademark to those derivative works. 

You asked about the trademark clauses in the AbiSource license.  As an
attorney, I cannot comment publicly about *specific* legal issues.
Indivuals with specific legal questions can contact their own attorney
or contact me privately.

The OSI board of directors approves licenses if they are consistent with
the OSD.  The board renders no opinion about the validity or
enforceability of specific clauses in specific licenses.

/Larry Rosen 

> -----Original Message-----
> From: Mark Wielaard [mailto:mark@elsschot] On Behalf Of Mark Wielaard
> Sent: Sunday, January 20, 2002 11:59 AM
> To: lrosen@rosenlaw.com
> Cc: license-discuss@opensource.org
> Subject: RE: NCSA Open Source License
> 
> 
> Hi,
> 
> On Sun, 2002-01-20 at 19:50, Lawrence E. Rosen wrote:
> > The suggestion that the Apache Foundation create a separate 
> trademark 
> > license is legally not possible, at least without many more 
> controls 
> > over the quality of derivative works than would be 
> acceptable by the 
> > open source community.
> 
> Could you explain that a bit more?
> 
> Isn't this what AbiSource does. They have the following 
> statement about their product:
> 
>   AbiSource software products, such as AbiWord, are copyrighted works
>   released under the terms of the GNU General Public License (GPL).
>   Verbatim copies of such works may be made and distributed, 
> by anyone,
>   in accordance with the terms of the GPL without violating the
>   AbiSource trademarks. The GPL also grants you certain rights to make
>   and distribute derivative works based on the source code to 
> AbiSource
>   products.
> 
>   The GPL does not grant you any right to use AbiSource trademarks in
>   connection with these derivative works. AbiSource trademarks may not
>   be used in connection with any such derivative works unless 
> that usage
>   is explicitly and specifically licensed, in writing, from SourceGear
>   Corporation.
> 
>   As a specific exception, AbiSource freely licenses the use 
> of certain
>   of its trademarks solely in combination with the suffix "Personal"
>   when applied to derivative works based on an AbiSource GPL product.
>   Thus, for example, you are free to use the mark "AbiWord 
> Personal" in
>   connection with derivative works that are based on 
> "AbiWord". To help
>   maintain this distinction, AbiSource releases the sources to its GPL
>   products with Personal-based trademarks.
> 
> For more information see 
> <http://www.abisource.com/information/license/> >.
> 
> Is that not 
> acceptable to the Open Source community?
> 
> Note that they write: "We are not evil. Our goal is very 
> simple. We want to make sure our software stays Open Source, 
> no matter what. That's why we chose the GPL. We also want 
> everyone to know which products are ours. That's why we are 
> so picky about our trademarks."
> 
> Cheers,
> 
> Mark
> 

--
license-discuss archive is at http://crynwr.com/cgi-bin/ezmlm-cgi?3