Subject: Re: Open Content woes
From: "Andrew C. Greenberg" <werdna@gate.net>
Date: Wed, 29 Sep 1999 08:02:01 -0400

rms responds with the verdict of his "lawyer friend downtown":

>Someone asked whether licensing a trademark for use in a specific free
>book could mean forfeiting it.  I recently asked our lawyer about a
>similar situation, and he said that licensing X does not imply
>licensing Y.  Licensing the use in screen shots in a manual would
>not imply licensing any other use of the trademark.

Imagine two law professors disputing a subtle question of discrete 
mathematics.  One insists the answer is 42, the other 37.  The first 
returns from a visit with his friend, the professor of computer 
science, brandishing a printout in hand, bearing the message "42." 
He says, "I asked my computer science professor what the computer 
would say, and he gave me this."

Consider the possibility that the computer program printing out the 
result may have been "42," and whether the question asked of the 
professor was, "Can't you make the computer print 42?"

Another anecdote:

I am fond of explaining to neophytes that a good law student quickly 
learns that on final exams (where you are graded on issue spotting, 
not conclusions), the professors don't give a damn about your 
answers, it is the QUESTIONS you ask that matter.  Then, when you 
begin clerking with a law firm, the good law clerk quickly learns 
that the clients don't give a damn about your questions, they want 
your answers.  Finally, upon being admitted to the bar and being 
asked to opine on these fine points, the good law associate goes to 
the library, researches thoroughly each question and discovers the 
subtle, but inevitable truth of legal issues: THERE ARE NO ANSWERS.

How a question is put to a legal computer will determine the result. 
The best analysis sounds very talmudic.  "It depends, on one hand, if 
... the answer could be this.  On the other hand, if ... then answer 
would instead be that.  Still ..."  Many legal questions can yield 
antipodal results, depending upon subtle differences in facts -- 
still other questions (particularly fair use questions) aren't legal 
questions at all, but are rather purely factual questions where a 
lawyer is asked to predict what a judge or jury would say -- the 
truth is that we don't know the answer until the judge or jury tells 
us so.

In short, it is difficult to evaluate legal advice without knowing 
precisely what was the question.  This is why the longest portion of 
written legal opinions tends to focus on detailing the specific 
assumptions and factual issues upon which the question is predicated. 
This is also why answers given by lawyers are almost always (if 
correct) along the line of "it depends."

The issue raised in the quoted portion suggests to me quite strongly 
that the wrong question was asked, or was so paraphrased that the 
answer cannot be evaluated.  But it raises one of those few questions 
of black letter trademark law, which ought to give anyone looking at 
trademark licensing under the GNU the heebie-jeebies:

	A trademark owner cannot give a license to a licensee in and 
to the trademark, without retaining the right to control the nature 
and quality of the goods or services sold under the mark.

Failure to do so, the giving of a so-called "naked license" will 
weaken and can destroy the mark.  It is suggested that Richard 
seriously reconsider this point, in view of the rules governing 
"naked licenses," and consider whether he is willing to permit GNU 
grantors to retain such control over GNU licensees products.  Any 
alternative places trademark holders at risk whenever they use GNU 
software.

Unlike many issues of law, as described above, this point is a 
no-brainer.  Any basic textbook on trademark licensing will have a 
chapter on the point.  You simply can't license unless you control 
the licensee's use of the license.  But the point of GNU was to leave 
licensees free to make mush out of the original if they are so 
inclined.

It is possible I am missing the point here.  I would be interested in 
a more particular description of the proposed new provision.