protecting trademarks and branding

Bruce Perens bruce at
Tue Jun 1 20:49:27 UTC 1999

From: "Forrest J. Cavalier III" <mibsoft at>
> I think it is very important and helpful to include a note about
> acceptable uses of trademarks, because it leads to voluntary
> compliance instead of "after the fact" communication, (or litigation)
> to eliminate violations.

For this reason, I'd suggest that you distribute the two licenses together,
or distribute a notice pointing to the trademark license in the same file
as the software license.

Note that Netscape doesn't distribute its trademark license with the NPL
or MPL. You have to contact them if you want that. What they distribute is
a negative statement "this isn't a trademark license", or "if you modify this
license document, you must not use these trademarks to refer to it".

> 1. What is gain/lost (for the user and the developer) when
> trademark and copyright terms are moved out of the license terms
> and into mandatory auxilliary notices? 

I see several benefits:

1. Given that the software license you select is one of the existing ones,
   there is absolutely no question regarding license compatibility with other
   instantiations of that same license. In addition, if it's determined that
    the X license is compatible with the GPL, for example, and you're using
    the X license, that statement of compatibility is true for your license
    as well. So it really simplifies the license-compatibility issue for
    everyone concerned.

2. Those who do not wish to license your trademark can simply refrain from
   using it, and can still be fully in compliance with your software license
   and have no dobuts about that. I can't over-state how confusing and
   even threatening some programmers find these licenses, because they often
   don't understand them. Splitting up the licenses simplifies the issue for
   them, because if they don't want to use the trademark they need not even
   read the trademark license. This is sort of like the benefit of programming
   in a modular style - by splitting things up, things become easier to read
   and you need only consider one of them at a time.

3. If you ever get to court, you are only arguing about one set of license
   terms rather than two (unless someone has violated both of your licenses).
   Removing complicating issues that aren't relevant to the case will result
   in a faster decision, with less money spent, and more likely a victory for

4. These Open Source guys will have nothing to say about your trademark license
   and they need only consider your software license.

> Including compliance terms would seem advantageous/necessary
> when software was going to be distributed to countries where
> laws and treaties did not apply, for instance.  The BSD and
> Apache licenses (as well as the one I proposed) restate trademark
> laws.  Other licenses restate copyright laws.  

Well, if you are concerned about this, it's enough to attach to the software
license something like "This is not a license to use the XXX trademark."
However, I suspect that anywhere that U.S. trademarks don't apply, your
software license is not going to be enforcable either, because their
government and ours aren't on good terms.

> I have to think about this method.  What is the legal penalty for
> non-compliance (i.e. not including the notice)?

You could, if you had to, make distributing the notice a term of the software
license. However, if someone doesn't distribute the notice, that does not
make it legal for anyone to use your trademark. In practice, this simply hasn't
been a problem so far. People distribute license files without altering them.

> How do you force violators to comply

If they use your trademark without complying with the trademark license,
you sue them for infringement on your trademark.

> Can someone say that they agreed to the license and not the
> disclaimer?

That wouldn't give them the right to use your trademark.



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